On October 10, 2012, the South Carolina Supreme Court handed down its ruling in Jennings v. Jennings. The court was faced with the challenge of interpreting a somewhat ambiguous provision in the Stored Communications Act (the “SCA”) – a federal law enacted in the late 1980s. The court’s opinion did little to help clarify the existing (and conflicting) interpretations of the SCA.
On October 8th, the U.S. House of Representative’s Intelligence Committee issued an investigative report (the “Report”) on issues related to the operations of Huawei Technologies Company Ltd. and ZTE Corporation. The Report potentially has far-reaching implications for the U.S. telecommunications supply chain.
On March 20, 2012, the Supreme Court handed down its opinion in Mayo Collaborative Services v. Prometheus Labs., Inc., No. 10-1150. In this case, the Court considered the validity of two patents belonging to Prometheus with claims directed towards the use of thiopurine drugs for the treatment of autoimmune diseases. In general, the claims recited steps including (i) administering the drug to a patient; (ii) determining the number of metabolites in a patient; and (iii) adjusting the subsequent dose of the drug based upon the number of metabolites that were present in the patient. The main issue considered by the Supreme Court was whether the subject patents were invalid under 35 U.S.C. § 101 for failing to claim patentable subject matter (as held by the district court) or whether the patents claims were valid under the machine-or-transformation test (as held by the Federal Circuit).
The American Institute of Physics and John Wiley & Sons Inc. recently filed a copyright infringement complaint against two U.S. law firms for making copies of copyrighted works and submitting them, without permission, to clients and the U.S. Patent and Trademark Office during prosecution of client patent applications. On January 19, 2012, the USPTO issued a memorandum stating its position on the subject. The USPTO stated, “we believe that it is fair use for an applicant to make copies of NPL and submit those copies to the USPTO during examination in an IDS. The USPTO takes no position on whether additional copies of NPL made during the course of patent prosecution (e.g. for the client, for other attorneys, for the inventor, or for the law firm’s future reference) qualify as fair use.” A copy of the Memorandum from the USPTO can be found here.
The TTAB recently handed down its precedential decision in Nike, Inc. v. Peter Maher and Patricia Hoyt Maher, 100 USPQ2d 1018 (2011). In this decision, the Mahers filed an application to register the mark JUST JESU IT in connection with items of clothing, including t-shirts and caps. Nike opposed registration based on its prior rights to the mark JUST DO IT. Nike claimed, in part, that the Mahers’ mark was likely to dilute the distinctiveness of JUST DO IT. The TTAB agreed and refused registration of the Mahers’ application.
Formerly known as the Patent Reform Act of 2011, the Leahy-Smith America Invents Act is close to being passed into law. Versions of the Act were approved in March in the Senate (S. 23, 95-5) and in June in the House (H.R. 1249, 304-117), and the House bill has been referred to the Senate.
It has been a busy year for ICANN, the organization responsible for the creation and implementation of domain names. In April, ICANN approved the long disputed and controversial .XXX extension. A few weeks ago, ICANN also finally approved the new generic top level domain (gTLD) program. These developments present a number of issues for trademark owners and entities that conduct a significant amount of business online.
Recently the United States Patent Office announced that it is extending and expanding the Full First Action Interview Pilot Program. The program provides for the Patent Applicant and the Examiner to conduct an interview prior to the issuance of the first Office Action on the merits. The program has been extended until May 16, 2012 and expanded to include all utility art areas (previously only the computers/digital processing systems and data processing art groups).
Under 35 U.S.C. § 251, applicants may file a reissue application to amend the claims contained in the issued parent patent. However, “claims that are ‘broader than the original patent claims in a manner directly pertinent to the subject matter surrendered during prosecution’ are impermissible.” In re Clement, 131 F.3d 1464, 1468 (Fed. Cir. 1997) (internal quotation omitted). In other words, applicants cannot broaden claims to recapture subject matter surrendered during prosecution of the issued patent. Application of the recapture rules requires a three step process: (1) determine whether and in what aspect the reissue claims are broader than the patent claims; (2) determine whether the broader aspects of the reissue claims relate to surrendered subject matter; and (3) determine whether the surrendered subject matter has crept into the reissued claim. Id. at 1468-69.
There has been a significant amount of discussion among the members of the patent bar concerning the proper standard to apply under a theory of joint liability for patent infringement. The Federal Circuit has weighed in several times, adopting a “direction and control” standard in the BMC and Muniauction cases. More recently, the Federal Circuit went further to require an agency relationship for there to be joint infringement. In Akamai, the Federal Circuit stated, “Implicit in this court’s holdings in BMC Resources and Muniauction is that the performance of a method step may be attributed to an accused infringer when the relationship between the accused infringer and another party performing a method step is that of principal and agent, applying generally accepted principles of the law of agency as explicated by the Supreme Court and the Restatement of Agency” (emphasis added). The court concluded: “This court therefore holds as a matter of Federal Circuit law that there can only be joint infringement when there is an agency relationship between the parties who perform the method steps or when one party is contractually obligated to the other to perform the steps.”