Had Your Fill of Turkey? How about a Side of Patent Petitions Data?

Now that our readers have had their fill of turkey and all the fixings, they can gorge on an abundance of patent petitions data. Earlier this year, Director of the USPTO Michelle Lee announced a new public, user-friendly tool to obtain information about the abundance and success rate of petitions of every nature. The information generally includes:

  1. The average number of days a petition is pending before a decision is made;
  2. The grant rate for a petition; and
  3. The office within the USPTO that makes the decision on the petition.

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Two Paths for Faster Appeals at PTAB – One for All Applicants; the Other for Small Entities

Earlier this fall the United States Patent and Trademark Office (USPTO) announced the “Streamlined, Expedited Patent Appeal Pilot for Small Entities” program (the Streamlined, Expedited program), which allows small and micro entities to expedite a single ex parte patent appeal pending before the Patent Trial and Appeal Board (Board). In order to take advantage of this program, a patent applicant must:

  1. Be a small or micro entity appellant;
  2. Have only a single ex parte patent appeal pending before the Board as of September 18, 2015;
  3. Have no claim involved in the appeal that can be subject to a rejection under 35 U.S.C. § 112;
  4. For each ground of rejection that is applied to more than one claim, select a single claim as representative and only discuss that claim in the appeal for that ground;
  5. Agree to waive any requested oral hearing; and
  6. Acknowledge that any oral hearing fees paid in connection with the appeal will not be refunded.

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More than a Feeling, Less than Trademark Infringement

Empty illuminated stage

In Scholz v. Goudreau, No. 13-CV-10951, 2015 WL 5554012 (D. Mass. Sept. 21, 2015) rock legends are before the District of Massachusetts grappling, in part, over a familiar band’s legacy.

After guitarist Barry Goudreau left the band BOSTON in 1981, he filed a suit against Thomas Scholz—one of the band’s founders—as well as BOSTON’s other members, in order to ascertain the parties’ rights and obligations going forward. Continue reading

Medical Device Classes Included in Newly-Released DMCA Exemptions

The Digital Millennium Copyright Act (DMCA) makes it illegal to circumvent technological measures used to prevent unauthorized access to copyrighted works.  Certain activities and classes of works, however, are exempted from this prohibition.  The exempted classes of works are determined by the U.S. Copyright Office every three years and remain in effect for the ensuing three-year period.  Continue reading

Evaluating the Effectiveness of Third Party Preissuance Submissions

Summary: While the Leahy-Smith America Invents Act (AIA) brought sweeping changes to the United States patent system, including moving to a first-to-file system and implementing and modifying a number of post-grant proceeding options, one less heralded change is the expansion of the third party preissuance submission process, by which a third party can submit prior art references in a pending U.S. patent application for consideration by the examiner. The revised preissuance submission process is significantly more robust and accessible than its pre-AIA counterpart. Key features of the process such as low cost, anonymity, and preclusion from estoppels make it a potentially attractive tool for challenging pending applications. However, a third party’s participation in the patent prosecution process is still limited and the submitted references may even inadvertently strengthen any patent that issues from the application in which the submission is filed. Accordingly, third parties should carefully consider the limitations and risks associated with the process before filing a preissuance submission.

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Ninth Circuit Reverses Itself, Slouching Away from “Initial Interest Confusion” Doctrine

Concannon-UpdateOver the summer we analyzed a decision by the Court of Appeals for the Ninth Circuit that denied Amazon.com, Inc.’s (Amazon) motion for summary judgment as to watchmaker Multi Time Machine, Inc.’s (MTM) claims that Amazon’s use of MTM’s trademarks as keywords at amazon.com was infringing. The Ninth Circuit has now taken the unusual step of revisiting and vacating its July decision, upholding the federal district court’s grant of summary judgment in favor of Amazon.  Continue reading

Supreme Court to Consider Willfulness in View of Octane Decision

On October 19, 2015, the Supreme Court consolidated and granted certiorari in Halo Electronics, Inc. v. Pulse Electronics, Inc., et al. and Stryker Corporation, et al. v. Zimmer, Inc., et al., both of which concern enhanced patent infringement damages under 35 U.S.C. § 284. At issue in both cases is the question of whether the Federal Circuit is correct in requiring a willfulness finding under the rigid, two-part Seagate test to award enhanced damages. Under Seagate, finding willfulness requires the patentee to prove that an infringer acted “despite an objectively high likelihood that its actions constituted infringement” and that such risk was known, or should have been known, to the infringer. The question of this test’s propriety is particularly ripe given the Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc. during its last term, where a similarly rigid test for imposing an award of attorney’s fees was rejected in favor of a more flexible and discretionary determination. Stay tuned for further updates on this issue. In the meantime, please see Nutter’s prior analysis of the Octane decision.

Google Books Deemed Fair Use

Digital Book

The Second Circuit Court of Appeals recently ruled that Google’s scanning of printed books and subsequent use of the resulting digital copies is fair use under the Copyright Act (17 U.S.C. § 107). Google was first sued by the Authors Guild a decade ago over its Library Project and Books Project, which involve scanning published works to create digital copies, making the text searchable, and displaying at least snippets of the work in connection with search results. The decision affirmed the lower court’s grant of summary judgment and focused on the transformative nature of Google’s use. The Second Circuit noted that Google’s use provides information about a book without being a substitute for the book itself. The decision may not be the final word in this case—the Authors Guild states on their website that they intend to appeal the ruling to the Supreme Court. Continue reading

Yoga Pose Series Not Copyrightable According to the Ninth Circuit


Bikram Choudhury, one of the most famous names in modern yoga, sought copyright protection in 2002 on a series of twenty-six yoga poses and two breathing exercises he developed and later called “the Sequence.” On October 8, 2015, the Ninth Circuit Court of Appeals ruled that the Sequence is not entitled to copyright protection because it is an “unprotectable idea.” The judges noted that the Sequence is akin to cooking recipes or surgical procedures. Accordingly, yoga studios that are not owned or operated by Choudhury are able to practice and teach the Sequence without concern for copyright infringement claims. Continue reading

Nutter quoted by Yahoo! News on Twitter’s football video removals under DMCA

David Powsner, a partner in Nutter’s Intellectual Property Department, was quoted by Yahoo! Finance in “Twitter’s football video removals raise questions for all media” on October 13. The article highlights recent actions taken by two firms that specialize in policing copyrights online under the Digital Millennium Copyright Act (DMCA). The firms told Twitter to take down posts that included video clips of professional and college football games. David, who recently co-authored a blog post and co-presented a podcast on DMCA takedowns, notes that the law is working as designed and that it is meant to provide a relatively low overhead mechanism for addressing accused infringements, whether on a web site or a social media network. “The overall purpose of that law remains applicable, whether in today’s social media-driven environment or yesterday’s digital media publishing environment,” he said. To view the article, click here.