News and Articles

The U.S. Becomes First-to-File For Patents

On September 16, 2011, President Obama signed the America Invents Act (AIA). Along with other significant changes to the U.S. patent system, this legislation converts the “first to invent” system to a “first inventor to file” system. These provisions of the Act went into effect on March 16, 2013. The new first-inventor-to-file” (FITF) system is a hybrid of the first-to-invent system preceding the Act and an actual first-to-file system, where




America Invents Act Creates a Transitional Program for Covered Business Method Patents

The America Invents Act (AIA) creates new administrative trial procedures to challenge patentability outside litigation before a district court venue. These trial procedures are namely (1) Post Grant Review (PGR), (2) Inter Partes Review (IPR) and (3) a transitional program for covered business method (CBM) patents. These laws went into effect on September 16, 2012. This update covers the transitional program for covered business method patents. A specific post-grant review




Copyright Violation and the Constitutionality of Excessive Damages – Music Downloaders Beware!

The Eight Circuit affirmed the constitutionality of statutory damages for copyright infringement against the challenge that it is disproportionately excessive in Capitol Records, Inc. v. Thomas-Rasset, 692 F.3d 899 (8th Cir. 2012). In 2011, record companies sued a woman for making copyrighted music available to others for free download by using a file-sharing service.  First the jury awarded the record companies $222,000 in damage.  Months after the verdict, however, the district court granted a new




Copyrights and Litigation Documents

The matter Unclaimed Property Recovery Service, Inc. v. Kaplan No., 12-4030 (2d Cir., Aug. 20, 2013) presents an issue of whether the holder of a copyright in a litigation document may withdraw the authorization to use the document after the document has already been introduced into the litigation and make subsequent infringement claim for the use of the document in the litigation. The plaintiff in this case, Bernard Gelb and




IP License Agreements Under the AIA

Over the past few years, there has been an ongoing subject matter jurisdiction battle between state courts and federal circuit courts. This jurisdiction battle is especially prevalent in cases where a complaint asserts a non-patent cause of action with an underlying patent issue, such as disputes over intellectual property licensing or malpractice claims. In most patent cases the “arising under” analysis for the Federal Circuit jurisdiction is fairly straight forward because a




Challenging A Patent Without Litigation - The New Inter Partes Review

The America Invents Act (AIA) has invoked significant changes to the U.S. patent system, a principal one being creation of Inter Partes Review (IPR), and concurrent elimination of the inter partes reexamination. Like the latter, the new Inter Partes Review is an administrative proceeding to invalidate patents, by allowing a party to petition the U.S. Patent and Trademark Office (USPTO) with prior art that destroys novelty or establishes the claimed




RAND Obligations and Injunctive Relief

Entities that are parts of technology standard-setting organizations are typically required to promise, in some fashion, to license patents essential to any resultant standard on reasonable and nondiscriminatory terms. Once the standard has been promulgated, the standard essential patents (“SEP”s) may be asserted in litigation and the patent holder is expected to live up to reasonable and non-discriminatory (“RAND”) terms. A thorny issue for courts and litigants in the context




FIRREA and Bank Fraud

The U.S. District Court for the Southern District of New York, in U.S. ex rel. O’Donnell v. Bank of America Corp et al., No. 12-01422 (S.D.N.Y. 2013), has endorsed a broad interpretation of a savings-and-loan era law that the Justice Department is trying to use in cases against Wall Street banks. This ruling came as part of a federal case against Bank of America over allegations that it sold toxic




The Federal Circuit Rules on Apple v. ITC

On August 7, 2013, the Federal Circuit affirmed-in-part the lower court’s decision in Apple Inc. v. ITC (2012-1338) finding no Section 337 violation in Certain Mobile Devices, and Related Software Thereof (Inv. No. 337-TA-750). The Federal Circuit ruled that Apple’s U.S. Patent No. 7,663,607, which related to a touch panel with a transparent capacitive sensing medium that can detect multiple touches at once, was invalid for anticipation and obviousness, and




Do Business Method Patents Hurt or Help?

Do Business Method Patents Hurt or Help? A Financial Industry Perspective, 14 VA. J.L. & TECH. 147 (2009). Abstract The State Street Bank decision of 1998 affirmed U.S. business method patents. Along with the subsequent downpour of patent filings came a shower of commentary from the legal and business communities alike. The literature has generally been thoughtful and well-reasoned, or at least well-meaning. But as practitioners in the fields, we