A party accused of infringing a patent may challenge the validity of the patent in the federal court infringement litigation or in separate administrative proceedings in the Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). One of the methods available in the PTAB is an inter partes review (IPR), which was created by the America Invents Act.

In order to file a petition for IPR, the challenger must argue that some or all of the claims of the patent are invalid on certain grounds, including novelty and nonobviousness, and must show that there is a “reasonable likelihood” that they will prevail on at least one claim.  The statutes require that a petition for IPR be filed within one year of the challenger being served with a complaint for patent infringement.  35 USC section 315(b).   The PTAB reviews the petition and decides whether to institute IPR.  The decision whether to institute IPR is not appealable.  35 USC section 314(d).  Continue Reading Supreme Court Limits Appeals to Prevent More Bad Patents

Burbank High School runs a music program that reportedly provided the inspiration for the hit TV show, Glee. It is nationally known for the competitive show choirs its students participate in as part of the program. To defray the costs of fielding several choirs, a non-profit booster club was formed to help fundraise for the music education program. The booster club puts on a couple of annual fundraising shows, Burbank Blast and Pop, which include both the Burbank High School choirs as well as a number of other competitive choirs. The choirs’ music director serves as the liaison between the school’s choirs and the booster club.

The music director hired an arranger to create custom sheet music for two shows to be performed at the fundraisers: Rainmaker and 80’s Movie Montage. In creating these performances, the arranger used snippets from the following songs: Magic (originally performed by Olivia Newton John) and (I’ve Had the) Time of My Life (by Bill Medley and Jennifer Warnes) as well as Hotel California and Don’t Phunk with my Heart. After several performances, Tresona Multimedia, LLC, sued the music director, the booster club and parent-members of the booster club for copyright infringement. Tresona Multimedia alleged that it owned the copyrights to the above songs and that its copyright interests were infringed upon because no licenses were obtained to allow the use of the above songs in the performances. Continue Reading Burbank High School Jumps with Glee over Copyright Victory

On March 31, 2020, the U.S. Patent and Trademark Office announced that, pursuant to the Coronavirus Aid, Relief, and Economic Security Act, certain deadlines for patent and trademark applications would be extended. The CARES Act authorizes the PTO to toll, waive, or modify any patent or trademark deadline in effect during the COVID-19 emergency. The announcements were made in written Notices of Waiver, one each for patents and trademarks, posted on the PTO’s website.

In order to exercise the power under the CARES Act, the PTO Director must determine that the COVID-19 pandemic materially affects the functioning of the PTO; prejudices the rights of patent applicants, trademark registrants, or patent/trademark owners; or prevents patent applicants, trademark registrants, or patent/trademark owners from making a filing or paying a fee in the PTO. Continue Reading Patent, Trademark, and Copyright Deadlines Extended Due to COVID-19

An unborn baby’s DNA (“fetal DNA”) can be used to determine the sex of the baby as well as to test for conditions such as Down’s syndrome.  In the past, procedures to get samples of fetal DNA for testing involved sticking a large needle through the abdominal wall and into the uterus of the mother to obtain amniotic fluid, but such procedures are invasive and can be life threatening in some cases.  Sequenom Inc. devised and patented less invasive options and licensed them to Illumina, Inc.  Ariosa Diagnostics, Inc. and others, however, challenged the patent eligibility of those options when accused of patent infringement.

Specifically, the various lawsuits have repeatedly brought into question whether the patent claims for these new prenatal tests and related methods are patent eligible under 35 U.S.C. §101 or if they are merely directed to ineligible natural phenomena.  In fact, in 2015, the Federal Circuit found Sequenom and Illumina’s patents (the “Original Patents”) were invalid as unpatentable because they were directed to a natural phenomenon.  This ruling raised many concerns in the industry as to which, if any, inventions of this type could be protected. Continue Reading Federal Circuit: Sequenom’s Fetal DNA Claims Are Patent Eligible

The Supreme Court of the United States has held that the state government is free to infringe copyrights without fear of retribution. In Allen v. Cooper, the Supreme Court decided whether the state of North Carolina could be held liable under the Copyright Act for infringing filmmaker Frederick Allen’s copyright relating to Queen Anne’s Revenge. If that name sounds familiar, it’s probably because it is, in fact, the flagship of the infamous pirate Blackbeard.

The facts giving rise to this dispute go back to the 1990s. Well, to be clear, the facts giving rise to the dispute go back to 1717 when Blackbeard was using Queen Anne’s Revenge to carry out his plunderous activities. In any event, in the 1990s, a research firm located the shipwreck and hired Frederick Allen to film their recovery efforts. During this process, Allen’s company recorded video and took photographs, which were registered with the United States Copyright Office. Continue Reading SCOTUS Rules That North Carolina is Protected from Copyright Infringement Claims by Sovereign Immunity