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Update on P3 Program

Thu, 12 Jan 2017 18:47:55 +0000

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Ann Robl

The Post-Prosecution Pilot (“P3”) Program closed today, January 12, at the end of its six-month run.  According to the USPTO, all of the technology centers met their limit of 200 requests, except for TC1600 (Biotechnology and Organic Chemistry), which had 141.

As previously discussed on PHOSITA, the P3 Program was an option for patent applicants who receive a rejection in a final Office Action. Like the Pre-Appeal Brief Conference Pilot Program, in P3 the applicant filed a short response (no more than five pages) to be considered by a panel of three examiners. The applicant also could file an optional non-broadening claim amendment. However, unlike other programs, P3 allowed the applicant to make a twenty minute oral presentation to the examiner panel. Also, the panel’s decision included an explanation supporting its decision, rather than the simple check box of the Pre-Appeal Brief Conference decisions.

The USPTO says that it is evaluating the results of the pilot to determine next steps. I would like to see them keep the program, as more information from the Examiner Panel has the potential to be helpful.

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Legal Guide for Bloggers

Mon, 09 Jan 2017 17:07:13 +0000

Douglas J. Sorocco

This is a reprise of a popular blog post published some years ago.

The EFF has released a Legal Guide for Bloggers. Included in this guide are sections on defamation, reporter's privilege, public records, and workplace blogging. But, the best section, in my mind, was Bloggers' FAQ: Intellectual Property. This section covers copying of other blogs, government documents, Creative Commons, licensing of comments, deep linking, copying of images, the DMCA, trademarks, and right of publicity. If you have any questions about intellectual property and blogging, check it out.

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Samsung v. Apple and Design Patent Infringement Damages

Sat, 07 Jan 2017 14:25:56 +0000

Elizabeth Isaac The Supreme Court issued a unanimous opinion in the Samsung Electronics Co., Ltd. v. Apple, Inc. case on December 6, 2016, concerning apportionment of design patent damages under 35 U.S.C. § 289. The Court answered the limited question of whether, in the case of a multicomponent product (e.g., a smartphone), the relevant “article of manufacture” must always be the end product sold to the consumer or whether it can also be a component of that product. Unlike the reasonable royalty remedy for infringing utility patents under 35 U.S.C. § 284, the design patent remedy under § 289 provides that an infringer “shall be liable to the owner to the extent of his total profits” for selling an “article of manufacture” that infringes a design patent.To Apple’s chagrin and Samsung’s delight, the Supreme Court held that damages could be narrowed to the profits associated with individual components, rather than profits for the entire end product.In overturning a nearly $400 million verdict against Samsung, the Court rejected the Federal Circuit’s determination that the relevant “article of manufacture” for calculating damages under § 298 must be the entire smartphone because the separate components that make up a smartphone are not available for consumer purchase. Apple’s design patents at issue included (1) a front face with rounded corners, (2) a rectangular face with rounded corners and a raised rim, and (3) a grid of colorful icons, drawings of which are reproduced above.In reaching its conclusion, the Supreme Court performed a textual analysis of § 298 and reasoned that the ordinary definition of the term “article of manufacture” is broad enough to include a component of a product. Because an article of manufacture is simply a thing made by hand or machine, “[a] component of a product, no less than the product itself, is a thing made by hand or machine.” The Court went on to square its reading of an article of manufacture in § 298 with the language in 35 USC § 171(a) (which defines design patent subject-matter eligibility) and with a hat tip to Application of Zahn, 617 F. 2d 261 (CCPA 1980), reasoning that “the statute is not limited to designs for complete articles.”As such, the Court shed light on Step 1 of the two-part step for calculating damages under § 298:                Step 1: Identify the article of manufacture.                Step 2: Calculate the infringer’s total profit made on that article of manufacture.However, the Court (“in the absence of adequate briefing”) punted on the more cumbersome and arguably more consequential Step 1, which has been remanded for the lower court to hash out and develop a test for determining whether the relevant article or manufacture in this case is the entire smartphone or a particular smart phone component. So, Samsung is still on the hook for design patent infringement, but the check it writes to Apple could be less after the litigants head back to the trial court.In the past, traditional utility patent prosecutors have frequently overlooked design patents as an afterthought or an alternative strategy where utility patent protection proved unattainable or cost prohibitive. Heads lifted with the Samsung/Apple litigation as the media shed greater light on prospects of obtaining total profits for the sale of a product infringing a design patent.  While I still believe that design patents are very valuable components in a client’s intellectual property portfolio, this decision could reduce the available damages for design patent infringement.   [...]


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Federal Circuit Holds PTAB exceeded Statutory Authority in using the Broader “Incidental” or “Complementary” Definition of Covered Business Method

Wed, 21 Dec 2016 14:06:13 +0000

Jeremy McKinney In Unwired Planet v. Google, the Federal Circuit vacated a PTAB Covered Business Method (CBM) review decision holding that the PTO’s definition of a “covered business method” was “not in accordance with the law.”Covered Business Method review (CBM) is one of a group of post-issuance administrative review procedures created as part of the America Invents Act (AIA). CBM review allows certain patents to be challenged on almost any patentability ground, including subject matter eligibility (under 35 U.S.C. § 101). The term “covered business method” is particularly defined to include any patent “that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” AIA § 18(d)(1).In its rules implementing the statute, the PTO did not further define or explain the CBM definition, however, in a policy statement, the PTO asserted that the program applies to patents that are “incidental to a financial activity, or complementary to a financial activity.” It is under this more expansive definition that the PTAB has been instituting many CBM reviews. In Unwired Planet v. Google, the Federal Circuit rejected this more far-reaching definition as contrary to the statute.Unwired’s patent claims a method of using a privacy policy associated with a wireless device to determine if applications are permitted to access the wireless device’s location information. The PTAB held the claims were a CBM by finding that businesses may want “to know a wireless device is in its area so relevant advertising may be transmitted.” The PTAB’s findings were based on the patent’s written description. The PTAB also found the patent claims to be invalid in the CBM under 35 U.S.C. § 101 as being directed to unpatentable subject matter. On appeal, however, the Federal Circuit found the required “financial product or service” link too tenuous and reversed the PTAB’s determination that the patent claims were a CBM. The court explained:The Board’s application of the “incidental to” and “complementary to” language from the PTO policy statement instead of the statutory definition renders superfluous the limits Congress placed on the definition of a CBM patent.This is great news for Unwired because the challenges based on § 101 are not allowed in inter partes review. In a broader sense, this decision by the Federal Circuit is important for two reasons. 1) The current definition of CBM under which the PTO has been instituting CBM review is too broad, and the Court gave no deference to the “policy statement” made by the PTO in its notice of the final rules. However, the Court does implicitly suggest that implementation of a more thorough definition in the CFR rules may be given deference. 2) While the decision to initiate a CBM is not appealable, in the present case the Federal Circuit held that it still has jurisdiction to review the CBM initiation question on appeal. In Versata, the Federal Circuit held that the initial question of whether a patent is a CBM patent may be reviewed on appeal. Despite the statutory language and the intervening Supreme Court decision in Cuozzo, the present case shows that the Federal Circuit is sticking to their guns and will continue to review CBM initiation questions on appeal. [...]



Happy Halloween

Mon, 31 Oct 2016 16:24:01 +0000

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Ann Robl

What do you consider a work-appropriate Halloween costume? If you work at Intellectual Property Law firm Dunlap Codding, it’s a Halloween Design Patent! Congrats to Lori Martin for her creative use of U.S. Design Patent No. D169,265. Happy Halloween!

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Red Dirt IP Digs Up Americana Roots

Fri, 16 Sep 2016 19:32:05 +0000

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Elizabeth Isaac

Dunlap Codding is honored to partner once again with the Oklahoma Film + Music Office to spread the word of the booming creativity abounding in our state. This time we are headed to Music City, U.S.A.!

Next week, Douglas Sorocco, Director and Shareholder at Dunlap Codding, will participate in a panel of distinguished legal professionals at the 17th annual Americana Fest & Conference in Nashville, Tennessee. On Friday, September 23, 2016, Mr. Sorocco will share his intellectual property expertise with music industry members in a discussion coined “Current Courtroom Battles in Entertainment and Intellectual Property Cases.”

Shout out to our neighbors, The Okay See, for another super rad t-shirt design featuring our DC logo with a musical twist (pictured above). Conference goers can grab a t-shirt at the Studio Oklahoma booth and party.

On a personal note, my talented cousin, Chris Lowe, recently relocated to Nashville to pursue his musical dreams. Chris is a songwriter, singer, and guitarist for the band Volk. Although I regret missing this go-round of out-of-state partnering with OK Film + Music, I am tickled-red Chris is able to attend the conference in my stead. Back home, we’ll be looking forward to Snap Chat shots of Chris and Douglas from Honky Tonk Highway.

Visit Studio Oklahoma’s website for a list of Oklahoma events sponsored, in part, by our law firm.

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Friday Fun – Lightsaber Training/Battle Simulator Patent Application

Fri, 09 Sep 2016 20:45:04 +0000

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Jeremy McKinney

This spring, Disney officially broke ground on a 14-acre expansion that includes “Star Wars” themed lands. Among other features, a recently published patent application (U.S. Patent Application No. 20160201888) hints at an interactive lightsaber attraction. Once you get past the bland title “Audience Interaction Projection System,” the application discloses a system that would allow fans to train like Luke Skywalker or even participate in an epic battle armed with a lightsaber.

The system uses infrared light to track the exact location of your lightsaber using a master controller. Drones or stationary projectors emit beams of light that are made visible by an atmosphere containing particulate matter (i.e., theatrical fog). When you “block” one of these beams of light with your lightsaber, or you are “hit” in a specially designed vest, transducers provide haptic feedback enabling you to feel the impact such as a recoil effect in your lightsaber.

While nothing will ever be quite like fighting your friends in epic neighborhood-wide battles with cheap plastic lightsabers, the system described in this patent application is sure to be fun for both younglings and the young at heart.

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Derivations: Wild West of the USPTO

Thu, 01 Sep 2016 23:18:18 +0000

Genni Ellis Derivations came on the patent scene via the Leahy-Smith America Invents Act (AIA) that was passed by Congress and signed into Law by President Obama on September 16, 2011.1 The derivations portion of the AIA applies to patents and applications with an effective filing date on or after 03/16/2013. For applications with a filing date prior to 03/16/2013, an interference proceeding is still used.In line with the first-to-file basis of the AIA, a derivation proceeding is used to figure out if a patent applicant “derived” the claimed idea in a patent application from the original inventor, in contrast to an interference proceeding, which is used to decide who created the invention first. A derivation proceeding is a trial proceeding before the Patent Trial and Appeal Board (PTAB) that is meant to ensure the first person to file a patent application is actually the true inventor.Let’s be honest, we all want to know about the test! To succeed in a derivation proceeding, the petitioner must pass a two part test:Prior conception of the invention by another, andCommunication of that conception to the patentee that is sufficient to enable him to construct and successfully operate the invention.2Anytime you are getting ready to study for the big exam you think, “Where do I begin?” Remember, the inventor who seeks a derivation proceeding must file an application. An inventor may copy an alleged deriver’s application by making the necessary changes to reflect accurately what the inventor invented in order to provoke the derivation proceeding.Then you will need to file a petition! To institute a derivation proceeding in the USPTO, an applicant for a patent must file a petition with respect to an invention claimed in an earlier-filed patent. The petition will need to be specific as to how the “inventor” in the earlier application derived the invention from the petitioner, and how they did so without the petitioner’s permission. What do you need to file a petition?Money.  The fee is $400 to file a derivation proceeding.The petition must identify which application or patent is being disputed.The petition must show that at least one claim is the same/substantially the same as the application/patent disputed.The petition must include at least one affidavit addressing the communication of the derived invention, and the lack of authorization for filing the earlier filed application.The petitioner must also identify the relief requested.3 The USPTO Director determines whether the petition demonstrates that the standards for instituting a derivation proceeding are met. The Director may institute a derivation proceeding, but is not required to institute, even if the petitioner meets all of the standards to institute a derivation proceeding.4How long do you have to file for a derivation proceeding? One year from the time in which the derived patent application was first published or initially granted, whichever is sooner! This requirement will keep many inventors and patent firms on their toes, but what do you do if you are too late? If you believe that a patent applicant has misappropriated your invention, but  you’ve missed the timeframe in which to file a petition, you could still file a patent application for the invention and possibly use the prior commercial use defense for § 102 or § 103 rejections based on the previously filed patent application. Another possibility is defending against attempted enforcement in court of a granted patent from the previously filed patent application by proving inequitable conduct by the patentee.4Decisions, Decisions. A decision by the PTAB can be deferred for up to three months. Why? The Board does not want [...]



Olympic Swimmer’s Defamation Lawsuit Sinks in Court

Thu, 18 Aug 2016 23:44:24 +0000

Alyssa Novak At the 2016 Rio Olympic Games, over 10,000 athletes are in the midst of competition for a chance at a singular moment of athletic glory. All of that pressure creates the temptation to boost one’s odds with performance enhancing drugs (PEDs).  However, if an athlete is caught—or even suspected of —using PEDs, his or her reputation may never recover. Take, for example, American 100-meter sprinter Justin Gatlin. Gatlin entered the Rio stadium this week to a cascade of boos because he had previously failed drug tests…ten years ago.All of this is to say, having your name associated with doping is essentially social suicide for an athlete.  Thus, when three-time Olympic gold medalist swimmer Katinka Hosszu was accused of using PEDs in a magazine article, she brought a defamation lawsuit in federal court. On Friday, the case was dismissed with the court finding that the statements qualified as opinion, which is protected by the First Amendment, even though the author “clearly implied” that Hosszu was using PEDs:[The author] never stated in the article that Hosszu has ever used performance-enhancing drugs, and ... his explicit caveats and his fair review of the facts on which his suspicions are grounded negate the possibility that he was affirmatively asserting as a fact that she has done so. He did not explicitly state—but he clearly implied—that he believes that Hosszu's performances should raise strong suspicions that she is using performance-enhancing drugs, and that he believes commentators should speak out about such suspicions. Such a 'statement' is not an assertion of fact. It is a personal opinion that is not susceptible of being proved true or false.The court found that “clearly implied” constitutes opinion, not a statement of fact. This case is a good reminder that there is a fine line between fact and opinion in defamation cases. As a review, here are four factors that courts use to differentiate statements of protected opinion from those asserting or implying actionable facts:1 Whether the specific language at issue has a precise meaning which is readily understood or ambiguous.Whether the statement is capable of being objectively characterized as true or false.An examination of the full context of the communication.A consideration of the broader social context or setting surrounding the communication including the existence of any applicable customs or conventions that may signal to readers or listeners that what is being read or heard is likely to be opinion, not fact.For example, here are several cases in which remarks fell under the broad “opinion” defense:Statements that “cannot reasonably [be] interpreted as stating actual facts,” meaning “loose, figurative, or hyperbolic language which would negate the impression that the writer was seriously maintaining” an actual fact, or where the “general tenor of the article” negates the impression that actual facts are being asserted.2Statements that no reasonable jury could find are “anything but rank speculation, surmise or hyperbole.” 3Statements viewed in the context of “[t]he culture of Internet communications, as distinct from that of print media such as [sic] newspapers and magazines, has been characterized as encouraging a freewheeling, anything-goes writing style. . . . [B]ulletin boards and chat rooms are often the repository of a wide range of casual, emotive, and imprecise speech, and . . . the online recipients of [offensive] statements do not necessarily attribute the same level of credence to the statements [that] they would accord to statements made in other contexts.”4As you can see, it is crucial to r[...]


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http://feedproxy.google.com/~r/phositarss/~5/DpBTleqvZX8/Order.pdf




Olympic Swimmer’s Defamation Lawsuit Sinks in Court

Thu, 18 Aug 2016 23:42:30 +0000

Alyssa Novak At the 2016 Rio Olympic Games, over 10,000 athletes are in the midst of competition for a chance at a singular moment of athletic glory. All of that pressure creates the temptation to boost one’s odds with performance enhancing drugs (PEDs).  However, if an athlete is caught—or even suspected of —using PEDs, his or her reputation may never recover. Take, for example, American 100-meter sprinter Justin Gatlin. Gatlin entered the Rio stadium this week to a cascade of boos because he had previously failed drug tests…ten years ago.All of this is to say, having your name associated with doping is essentially social suicide for an athlete.  Thus, when three-time Olympic gold medalist swimmer Katinka Hosszu was accused of using PEDs in a magazine article, she brought a defamation lawsuit in federal court. On Friday, the case was dismissed with the court finding that the statements qualified as opinion, which is protected by the First Amendment, even though the author “clearly implied” that Hosszu was using PEDs:[The author] never stated in the article that Hosszu has ever used performance-enhancing drugs, and ... his explicit caveats and his fair review of the facts on which his suspicions are grounded negate the possibility that he was affirmatively asserting as a fact that she has done so. He did not explicitly state—but he clearly implied—that he believes that Hosszu's performances should raise strong suspicions that she is using performance-enhancing drugs, and that he believes commentators should speak out about such suspicions. Such a 'statement' is not an assertion of fact. It is a personal opinion that is not susceptible of being proved true or false.The court found that “clearly implied” constitutes opinion, not a statement of fact. This case is a good reminder that there is a fine line between fact and opinion in defamation cases. As a review, here are four factors that courts use to differentiate statements of protected opinion from those asserting or implying actionable facts:1 Whether the specific language at issue has a precise meaning which is readily understood or ambiguous.Whether the statement is capable of being objectively characterized as true or false.An examination of the full context of the communication.A consideration of the broader social context or setting surrounding the communication including the existence of any applicable customs or conventions that may signal to readers or listeners that what is being read or heard is likely to be opinion, not fact.For example, here are several cases in which remarks fell under the broad “opinion” defense:Statements that “cannot reasonably [be] interpreted as stating actual facts,” meaning “loose, figurative, or hyperbolic language which would negate the impression that the writer was seriously maintaining” an actual fact, or where the “general tenor of the article” negates the impression that actual facts are being asserted.2Statements that no reasonable jury could find are “anything but rank speculation, surmise or hyperbole.” 3Statements viewed in the context of “[t]he culture of Internet communications, as distinct from that of print media such as [sic] newspapers and magazines, has been characterized as encouraging a freewheeling, anything-goes writing style. . . . [B]ulletin boards and chat rooms are often the repository of a wide range of casual, emotive, and imprecise speech, and . . . the online recipients of [offensive] statements do not necessarily attribute the same level of credence to the statements [that] they would accord to statements made in other contexts.”4As you [...]


Media Files:
http://feedproxy.google.com/~r/phositarss/~5/DpBTleqvZX8/Order.pdf