Ex parte Milder (PTAB 2018)

PTAB Affirms Patent Eligibility of Claims for Playing Dice Game By James Korenchan — In a decision issued last month, the Patent Trial and Appeal Board of the U.S. Patent and Trademark Office reversed the final rejection of all pending claims in U.S. Application No. 14/207,507. Claims 2-7 were rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter and claims 1-22 under 35 U.S.C. § 103. This post focuses on the § 101 decision. The claims at issue are generally directed to a dice game, which the application refers to as “Rainbow Dice.” In particular, the game…

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  • The Supreme Court Should Grant Cert in Zup to Correct Obviousness Doctrine

    On behalf of nonprofit, U.S. Inventor, Inc., and over a dozen other amici, Flachsbart & Greenspoon, LLC has submitted a Brief of Amici Curiae urging the Supreme Court to grant certiorari from the Federal Circuit’s notoriously error-ridden decision in the waterskiing case: Zup, LLC v. Nash Manufacturing, Inc. Reviewing this decision will be an excellent way to get obviousness doctrine back on track.

    In that 2-1 decision (with Judge Newman dissenting), the Federal Circuit held that even…

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  • CAFC reverses ED Va in SUPERNUS PHARMACEUTICALS, a patent term adjustment case

    The outcome:

    Supernus Pharmaceuticals, Inc. and United Therapeutics
    Corp. appeal the entry of summary judgment by
    the U.S. District Court for the Eastern District of Virginia.
    The district court determined that, based on this
    court’s decision in Gilead Sciences, Inc. v. Lee, the U.S.
    Patent and Trademark Office’s calculation of the patent
    term adjustment for the patent at issue was correct, and
    that summary judgment was warranted as a matter of
    law. We reverse the district court’s grant of summary
    judgment because the patent term adjustment in this case
    went beyond the period during which the applicant failed
    to undertake reasonable efforts and thereby exceeded the
    limitations set by the patent term adjustment statute.

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  • District Court Upholds Orexo Patent for Opioid Dependency Treatment Over Actavis’ Generic

    On January 10, the U.S. District of Delaware held that Actavis’ generic version of Orexo’s opioid dependency treatment infringed an Orexo patent. The patent-at-issue in this order was U.S. Patent No. 8940330, titled Abuse-Resistant Pharmaceutical Composition for the Treatment of Opioid Dependence. This non-appealable infringement judgment prevents Actavis from commercializing its generic opioid dependency treatment until Orexo’s patent rights expire in September 2032. The judgment covers all…

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  • 侵食

                            目次はこちら

    侵食

    (EROSION)
    $$ Gabions are temporary or semi-permanent fortification structures which are used to protect military or civilian installations from wea…

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  • Federal Circuit Allows Reconsideration of Non-Instituted Ground in IPR

    In AC Techs., S.A. v. Amazon.com, Inc. the Federal Circuit found the PTAB did not exceed its statutory authority by addressing a non-instituted ground on reconsideration; in fact, it would have violated the statutory scheme for the PTAB not to consider the previously non-instituted ground… The claims at issue related to data access and management, namely, storing copies of data across a network to improve data integrity and reduce network lag. Amazon and Blizzard challenged the ’680 patent…

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  • The Name’s the Thing

    Much to my chagrin, my kids like to waste their time not just playing video games, but also watching videos of others playing video games. This is a big business. Apparently the top Fortnite streamer made some $10 million last year. Whaaaaat? But these services aren’t interchangeable. The person doing the streaming is important to the viewer.

    But what if two streamers have the same name, say Fred, or Joan, or…Kardashian. Should we allow someone to lock others with the same name out? Under what circumstances? And what if the service is simply being famous-for endorsements, etc.

    Bill McGeveran (Minnesota) has posted an article that discusses these issues called Selfmarks, now published in the Houston Law Review. It is on SSRN, and the abstract is here:

    “Selfmarks” are branded personal identifiers that can be protected as trademarks. From Kim Kardashian West to Beyoncé’s daughter, attempts to propertize persona through trademark protection are on the rise. But should they be? The holder of a selfmark may use it to send a signal about products, just like the routine types of brand extension, cross-branding, and merchandising arrangements fully embraced under modern trademark law. Yet traditional trademark doctrine has adjusted to selfmarks slowly and unevenly. Instead, the law has evolved to protect selfmarks through mechanisms other than trademarks. In an age where brands have personalities and people nurture their individual brands, it is time to ask what principled reasons we have not to protect the individual persona as a trademark.

    I liked this article a lot–especially its straightforward approach. It looks at these marks through the lens of trademark law (as it should), considering use (that is what goods and services) and distinctiveness. In doing so, it provides several useful hypotheticals that illustrate the problems of using names as trademarks. The paper also considers Lanham Act sections that specifically deal with names.

    Finally, the paper discusses a couple of concerns. First is endorsement confusion. As the “service” of a celebrity becomes endorsement, then everything the celebrity does is potentially an endorsement, even though that may not be the intention. McGeveran discusses this concern. Second is the ever-present speech concern. If names are protected as marks, then it is harder to use that name in speech.

    This article is a really good primer on names as marks. I think a good extension for the next one would be a topic that a student of mine wrote about last year: joint marks. That is, when multiple people have the same name – together even – then the mark can cease being distinctive of their individual goods. My student did a great case study of the Kardashian marks, showing that several of them may well be invalid, but I think this could be extended to a longer theoretical piece if it hasn’t been done already.

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  • Happy Birthday, Senator Birch Bayh

    Hopefully, you’ve been fortunate enough—at least once in your life—to work for someone you really admired. That happened to me as a Senate Judiciary Committee staffer for Senator Birch Bayh (D-IN), who gave me the opportunity that changed my life. He turns 91 today… Bayh-Dole not only cut through the bureaucratic red tape strangling the development of federally-funded R&D; it marked a turning point in how patents were viewed in Congress. When I first joined the Committee, patents were…

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  • 浸出

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    浸出

    (LEACH)
    $$ The leachate was characterised by having a chemical oxygen demand (COD) level of approximately 1000 mg/dm.sup.3 and an ammonia (NH3) co…

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  • Industry Insiders: Opinions Mixed in Aftermath of Supreme Court Holding in Helsinn

    Yesterday a unanimous Supreme Court ruled that the America Invents Act’s (AIA’s) language barring patent protection for inventions that were “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention” under 35 U.S.C. § 102(a)(1) extends to private sales to third parties. The decision upholds pre-AIA Federal Circuit precedent establishing that a “secret sale” could invalidate a patent. The question patent owners have been asking since…

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  • PTAB Trends: More Orange Book Patents Are Surviving the ‘Death Squad’

    Since its inception, the Patent Trial and Appeal Board (PTAB) has been a frequent venue for patent challenges in the pharmaceutical and biotechnology industries. By the end of the U.S. Patent and Trademark Office’s (USPTO’s) 2018 fiscal year, patents in those fields were targeted in nearly 10% of all petitions for inter partes review (IPR), totaling approximately 900 individual petitions. Of these 900 petitions, roughly 5% challenged patents listed in the FDA’s Orange Book for approved drug…

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  • Supreme Court decides Helsinn v. Teva, Secret Sale Qualifies as Prior Art Under the AIA

    n a relatively short, unanimous decision authored by Justice Thomas, the Court begins by explaining that twenty-years ago in Pfaff v. Wells Electronics, Inc., 525 U.S. 55, 67 (1998) the Court determined that an invention was on sale within the meaning of pre-AIA § 102 if it was subject to a commercial offer for sale and it was ready for patenting. Moreover, Thomas recognized that prior to passage of the AIA the Federal Circuit had clearly established that a secret sale could invalidate a…

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  • U.S. Supreme Court Affirms in Helsinn v. Teva

    Opinion here.  Although this case is not directly relevant to patent remedies, it is an important decision, and in my view the Court (unanimously) got it right.  From the opinion, by Justice Thomas:
    The Leahy-Smith America Invents Act (AIA) bars a person from receiving a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 35 U. S. C. §102(a)(1). This case requires us to decide whether the sale of an invention to a third party who is contractually obligated to keep the invention confidential places the invention “on sale” within the meaning of §102(a).

    More than 20 years ago, this Court determined that aninvention was “on sale” within the meaning of an earlier version of §102(a) when it was “the subject of a commercial offer for sale” and “ready for patenting.” Pfaff v. Wells Electronics, Inc., 525 U. S. 55, 67 (1998). We did not further require that the sale make the details of the invention available to the public. In light of this earlier construction, we determine that the reenactment of the phrase “on sale” in the AIA did not alter this meaning. Accordingly, a commercial sale to a third party who is required to keep the invention confidential may place the invention “on sale” under the AIA.

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  • Filer of an ANDA Paragraph III Certification has Standing to Appeal from PTAB in IPR

    The ‘650 patent covers a compound called fesoterodine, which is an antimuscarinic drug marketed as Toviaz® and used to treat urinary incontinence. Mylan Pharmaceuticals petitioned for IPR of the ‘650 patent alleging certain claims were obvious. After institution of the IPR, Amerigen and two other companies joined as parties to the proceeding. After the PTAB’s finding that the challenged claims were not unpatentable, Amerigen—but not Mylan—appealed the decision.

    On appeal, UCB asserted Amerigen…

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  • Happy Birthday, Senator Birch Bayh

    Hopefully, you’ve been fortunate enough—at least once in your life—to work for someone you really admired. That happened to me as a Senate Judiciary Committee staffer for Senator Birch Bayh (D-IN), who gave me the opportunity that changed my life. He turns 91 today… Bayh-Dole not only cut through the bureaucratic red tape strangling the development of federally-funded R&D; it marked a turning point in how patents were viewed in Congress. When I first joined the Committee, patents were…

    Continue Reading ...