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First Amendment Finally Reaches Patent Law

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The big news from Intellectual Ventures v. Symantec (Fed. Cir. 2016) is not that the court found IV's content identification system patents invalid as claiming ineligible subject matter.  (Although that did happen). Rather, the big event is Judge Mayer's concurring opinion that makes "make two points: (1) patents constricting the essential channels of online communication run afoul of the First Amendment; and (2) claims directed to software implemented on a generic computer are categorically not eligible for patent."

Read Judge Mayer's opinion in full:

MAYER, Circuit Judge, concurring.

I agree that all claims on appeal fall outside of 35 U.S.C. § 101. I write separately, however, to make two points: (1) patents constricting the essential channels of online communication run afoul of the First Amendment; and (2) claims directed to software implemented on a generic computer are categorically not eligible for patent.

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NO FAKES Act: Unpacking the New Bipartisan Bill on Digital Replicas

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Senators aim to rein in digital replicas with the “NO FAKES” Act which proposes a limited federal right to control one’s likeness using some DMCA-like notice-and-takedown elements.

Guest post by Professor Justin Hughes

This week, Senators Blackburn, Coons, Klobuchar, and Tillis introduced the bipartisan “NO FAKES” Act in Congress, a bill that has been under discussion for months and is intended to provide centerpiece legislation addressing the problem of digital replicas.  The recording industry (RIAA) and the actors’ union (SAGAFTRA) have been the leading proponents of such a law.  Senate Judiciary staff led a process with those groups–and with the Motion Picture Association (MPA)–that went through a long series of drafts.  AI companies were also part of the drafting process.

The bill is substantively complex and structurally complicated, partly the result of so many cooks in the kitchen.  What follows here are only the bill’s basics – as well as some concerns.

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Patent Agent or Technical Advisor – Law Firm – Salt Lake City, Utah

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Dorsey & Whitney is a trusted legal advisor and valued business partner with locations across the United States, Canada, Europe and Asia. We are a premier legal counselor to companies worldwide in a wide range of industries, including banking & financial institutions; development & infrastructure; energy & natural resources; food, beverage & agribusiness; healthcare; and technology.

Dorsey’s Patent group is seeking a Patent Agent or Technical Advisor with one to five years of patent prosecution experience to be located in our Salt Lake City office. Patent bar-eligible candidates with the right technology background and writing experience will also be considered. The ideal candidate will have a passion for understanding and writing about mechanical systems, materials, consumer electronics, and the outdoor industry. All relevant technical backgrounds will be considered. Strong academic credentials and USPTO admission or eligibility are required.

In this role you will:

  • Conduct inventor interviews in preparation for drafting original patent applications.
  • Draft patent applications and prosecute patent applications before the US Patent and Trademark office (USPTO) and foreign jurisdictions via communications with local counsel.
  • Prepare office action responses for local and international patent applications.
  • File documents with the USPTO when required.
  • Support patent litigation and perform due diligence on a per case basis.
  • Perform patent searches, analyze invention disclosures, scientific or technical documents, and review issued patents in order to evaluate patent specific issues such as patentability and validity.
  • Conduct freedom to operate searches, competitive landscape searches, and review prior art.
  • Manage a U.S. and foreign patent prosecution docket such that deadlines are met.
  • Conduct interviews with examiners at the USPTO.
  • Work closely with our collaborative team of attorneys, agents, paralegals, and legal assistants to ensure excellence in client service at all times.

What we’re looking for:

  • One to five years of agent/advisor experience.
  • At least a B.S. in Mechanical Engineering, Material Science, or related field.
  • Strong academic performance.
  • USPTO admission is preferred.

We are looking for the right person, not just the right resume or experience level. Collegiality and teamwork are highly valued, and broad skills and curiosity can be as important as a specific technical degree.

About Dorsey:

Dorsey values the strength that comes from a diverse and inclusive workplace. It contributes to the success of our people and our clients and enriches our experience. We encourage individuals with diverse backgrounds and experiences to apply.

Dorsey & Whitney LLP is an EEO/AAP/Disabled Vets Employer. All qualified applicants will receive consideration for employment without regard to race, color, creed, religion, ancestry, sex, national origin, sexual orientation, gender identity, affectional preference, disability, age, marital status, familial status, status with regard to public assistance, military or veteran status, or any other legally-protected status.

Dorsey participates in E-Verify.

How to Apply:

Dorsey & Whitney LLP accepts online applications. Please go to the “Careers” section of the Dorsey website at www.dorsey.com/staffjobs and complete Dorsey’s online application form. If a disability affects your ability to apply using our online system, please call 612-492-5178 to discuss reasonable accommodations in connection with your application. We are unable to accept application materials by mail or email.

Dorsey offers a competitive pay and benefits package including comprehensive medical, dental, and vision insurance; domestic partner benefits (for same-sex and opposite-sex domestic partners; a generous paid time off policy; retirement savings plan; profit sharing contribution; paid holidays; paid parental leave, paid volunteer day; adoption assistance; back-up child care program; well-being programs and activities; a 24/7 employee assistance program with confidential counseling; and more! (Some benefits are subject to eligibility criteria).

Please note that Dorsey is not currently accepting search firm submissions in connection with this opening.

How to Apply: Dorsey & Whitney LLP accepts online applications. Please go to the “Careers” section of the Dorsey website at www.dorsey.com/staffjobs and complete Dorsey’s online application form. If a disability affects your ability to apply using our online system, please call 612-492-5178 to discuss reasonable accommodations in connection with your application. We are unable to accept application materials by mail or email.

Additional Info
Employer Type: Law Firm
Job Location: Salt Lake City, Utah

Supreme Court Patent Cases: Malpractice, Obviousness, and Venue

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by Dennis Crouch

The Supreme Court will begin granting and denying petitions in early October.  Meanwhile, several new petitions are now on file.  Last week I wrote about the TC Heartland case as a mechanism for limiting venue. Without any good reason, the Federal Circuit overruled a 1957 Supreme Court case that had strictly limited patent venue as spelled out in the patent venue statute 1400(b).  See VE Holdings (explaining its overruling of Fourco Glass). A result of VE Holdings is the expansive venue availability that facilitated the rise of E.D. Texas as the most popular patent venue. TC Heartland simply asks the Supreme Court reassert its Fourco holding - something that could almost be done with a one-line opinion: "REVERSED. See Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957)."  The best arguments for the Federal Circuit's approach are (1) the reasoning of Fourco itself is a bit dodgy; and (2) VE Holdings is well settled doctrine (decided 26 years ago) and Congress has revised the statutory provisions several times without amending.  As a side note, several members of Congress have suggested they will act legislatively if SCOTUS fails to act.

Two new petitions (Grunenthal v. Teva and Purdue v. Epic) stem from the same Federal Circuit OxyContin case and focus on anticipation and obviousness respectively.  Grunenthal v. Teva questions how 'inherently' operates for anticipation purposes.   Purdue suggests that - despite the final sentence of Section 103, that the actual circumstances of the invention should be available to help prove non-obviousness (but still not be available to prove obviousness).   Another new petition includes the BPCIA case Apotex v. Amgen that serves as a complement to the pending Sandoz case questioning the requirements and benefits of providing notice of commercial marketing.

Finally - Encyclopedia Britannica v. Dickstein Shapiro is a patent prosecution malpractice action.  The lower court held the lawyers harmless since Alice would have invalidated the patents even if drafted to perfection. The petition asks whether Alice Corp can excuse patent prosecutors from alleged prosecution errors made well prior to that decision.

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Trademark/Copyright Staff Attorney – Law Firm – Los Angeles, Calif.

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The Los Angeles office of Manatt, Phelps & Phillips, LLP, is seeking a highly qualified staff attorney with at least four to seven years of relevant experience to join our high-profile and fast-paced IP protection and enforcement practice. More-senior candidates are welcome to apply.

The IP protection and enforcement practice represents clients in a wide range of industries including entertainment, fashion, consumer products, technology, financial services, and digital media in all aspects of trademark and copyright practice including trademark/copyright counseling, trademark clearance/prosecution, copyright counseling/registration, branding/copyright counseling for online/digital media, IP transactions, trademark/copyright disputes, management of international trademark portfolios, inter partes proceedings before the Trademark Trial and Appeal Board, and online enforcement of IP rights (e.g., ICANN domain name disputes, online takedowns, DMCA).

Requirements:

  • At least four to seven years of experience specific to trademark/copyright, and in-depth knowledge of trademark counseling, clearance, prosecution and portfolio management including complex office actions
  • Strong experience in handling trademark disputes (e.g., demand letters, TTAB proceedings, UDRP proceedings, online takedowns)
  • Experience handling discovery and drafting pleadings, briefs and motions
  • IP transactional experience a plus
  • Excellent writing, research and communication skills
  • Thrives working both independently and in a team environment
  • Nimble in a fast-paced environment and detail oriented
  • Strong and committed work ethic
  • California Bar membership in good standing

EEO/AA Employer/Veterans/Disabled

Contact
All candidates must apply through our online application portal, available here: https://www.manatt.com/Careers/Current-Opportunities/Trademark-Copyright-Staff-Attorney. Required application materials include a cover letter, resume, writing sample, and transcript.

Additional Info
Employer Type: Law Firm
Job Location: Los Angeles, California

USPTO launches the Expanding Innovation Hub, a new online platform to encourage greater participation in the patent system

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The following post is republished from the USPTO Director's Blog and is authored by USPTO Director Andrei Iancu and Deputy Director Laura Peter. 

Red, yellow, and blue silhouettes of heads look left and right.

“To maintain our technological leadership, the United States must broaden our innovation ecosphere demographically, geographically, and economically.”---USPTO Director Andrei Iancu

Today, as part of Women’s History Month, the USPTO has officially launched the Expanding Innovation Hub (“the Hub”), an online platform available on the USPTO website that provides resources for inventors and practitioners to encourage greater participation in the patent system. The new platform is yet another step the USPTO has taken to broaden the innovation ecosphere, to inspire novel inventions, to accelerate growth, and to drive America’s global competitive edge. It builds on our SUCCESS Act report to Congress of 2019, as well as our Progress and Potential report on women inventors.

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