Trademark Solicitation Scams

Last month the United States Patent and Trademark Office (“the Office”) announced its cooperation in a Department of Justice investigation into a trademark scam perpetrated by two California men that defrauded about 4,446 people of $1.66 million. Trademark scams have been steadily on the rise over the past few years, which we have previously written about here. The current investigation resulted in the arrest of Artashes Darbinyan and Orbel Hakobyan, both of Glendale, CA, and their guilty pleas to charges of mail fraud and money laundering.

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UPDATE: BOSTON’S Founder and a Former Bandmate Still Seek Peace of Mind

Empty stage with band equipment

We have written previously about Scholz v. Goudreau, No. 13-CV-10951 (D. Mass.); the case recently went to trial on the parties’ surviving claims, and they are now immersed in post-trial briefing.

Tom Scholz and Barry Goudreau were once bandmates in BOSTON, and since Goudreau left the group in 1981, the two have occasionally litigated the trademark ramifications of his post-BOSTON career. The present dispute mostly arose from promotions tied to other musical acts and events that Goudreau was associated with.

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A Report on The World’s Most Innovative Universities Affirms Strengths of Massachusetts Universities and Others Around the World

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As the recent U.S. Commerce Department survey affirmed (and discussed in our blog previously), intellectual property (IP) is a significant driver for our economy. Since universities are both key sources of IP and training grounds for many who work in the innovation economy, we note with interest a recent report on the world’s most innovative universities.

The Reuters 100: The World’s Most Innovative Universities – 2016 released a ranking of the world’s top 100 most innovative universities. The ranking is based on a number of factors, including the universities’ IP activities (e.g., patent application filing) and publication of academic journal articles.

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SCOTUS UPSETS THE APPLE CART?: The High Court Answers Key Question on Design Patent Damages, But Leaves Many Unanswered

The United States Supreme Court today overturned a $400 million verdict in a highly-publicized and long-waged patent battle between Apple and Samsung. Samsung Elcs. Co., Ltd. v. Apple Inc., 580 U.S. __ (Dec. 6, 2016). In doing so, it addressed design patents for the first time in 130 years and held that damages in design patent cases do not necessarily need to be based upon the profits made from a whole end product sold to a consumer, but may be limited to a component of that product. Nonetheless, the Court’s unanimous opinion, penned by Justice Sotomayor, may raise more questions than it answers.

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The District of Massachusetts Sheds Light on Halo’s New Standard for Willfulness and Enhanced Damages in Trustees of Boston University v. Everlight Electronics Co., Ltd.

Since the Supreme Court decision in Halo Electronics v. Pulse Electronics came down earlier this year (as previously discussed here), district courts across the country have been grappling with the high court’s new standard for determining willful infringement and awarding enhanced damages in patent cases. In the District of Massachusetts, only one case to date has interpreted this new standard, Trustees of Boston University v. Everlight Electronics Co., Ltd.

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Amdocs v. Openet: Federal Circuit Finds Network Patents Eligible Under § 101

The Federal Circuit this month issued another decision finding claims to a computer-implemented invention to be patent-eligible under 35 U.S.C. § 101. In Amdocs (Israel) Ltd. v. Openet Telecom, Inc. (Fed. Cir. Nov. 1, 2016), the Federal Circuit held that claims directed to a distributed architecture for collecting and processing computer network data close to its source met the requirements of the Alice/Mayo framework, and therefore recited patent-eligible subject matter.

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USPTO Provides Guidance to Examiners on Recent Federal Circuit Decisions Relating to Patent Eligibility of Software Claims

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Over the past six years, the U.S. Supreme Court has issued a series of decisions—Bilski, Mayo, Myriad, and Alice—that have significantly impacted patent eligibility law, particularly in the areas of software and biotechnology. On November 2, 2016, the United States Patent and Trademark Office (USPTO) published a memorandum to patent examiners, discussing two recently-issued Federal Circuit decisions, namely McRO, Inc. v. Bandai Namco Games America Inc.[1] and BASCOM Global Internet Services v. AT&T Mobility LLC[2]. In these cases, software-related claims were deemed patent eligible—a seemingly rare occasion in view of the Supreme Court precedent (for discussion of the McRO and BASCOM decisions, please see details in our previous post). The November 2nd memorandum is the latest of three memoranda[3] discussing various Federal Circuit decisions concerning subject matter eligibility since the USPTO last updated its official guidelines on May 4, 2016. As in previous memoranda, the USPTO reiterates that the Federal Circuit decisions do not alter the current eligibility framework, but provide additional tools for finding patent eligible subject matter in software claims. In addition to discussing the McRO and BASCOM decisions, the November 2nd memorandum identifies several notable points to be considered by patent examiners. Continue reading

EPO Begins Enforcing Dual-Party Execution of Assignments

We have previously noted that assignments executed solely by the assignor (e.g., an inventor when assigning rights to their employer) are technically deficient in Europe due to a difference between U.S. and European law. In particular, Article 72 of the European Patent Convention (EPC) requires assignments to bear “the signature of the parties to the contract,” while contract law in the U.S. considers a contract signed only by the conveying party to be valid for this type of one-way conveyance.

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Federal Circuit Clarifies Pleading Requirements for Joint Infringement

Earlier this year, we discussed the potential ramifications of the December 2015 amendments to the Federal Rules of Civil Procedure on the pleading standard of infringement following the decision in Rembrandt Patent Innovations LLC v. Apple Inc. In Rembrandt, the U.S. District Court in the Northern District of California applied the Twombly/Iqbal standard of pleading to infringement contentions following the abrogation of Rule 84 of the Federal Rules of Civil Procedure and Form 18.

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U.S. Commerce Department Releases Updated Report Showing Intellectual Property-Intensive Industries Contribute $6.6 Trillion and 45.5 Million Jobs to U.S. Economy

Digital arrow and circuit board

The U.S. Commerce Department recently released a comprehensive report, entitled “Intellectual Property and the U.S. Economy: 2016 Update” (the “Report”). The Report, which was co-authored by the Economics & Statistics Administration and the United States Patent and Trademark Office, builds upon an earlier 2012 report, finding that “IP-intensive industries continue to be a major, integral and growing part of the U.S. economy.” The Report provides a wealth of quantitative information and analysis on the value of trademarks, copyrights, and patents to the U.S. economy. Key findings include:

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