Practical Law will present a free 60-minute webinar that will address the recent amendments to the Trademark Rules of Practice and how they affect TTAB practice and procedure.

The event will be Thursday, Nov. 10, 1-2 p.m. EST.

The program will cover:
* critical amendments to TTAB procedure.
* a discussion about the TTAB’s reasoning behind the amended rules.
* the TTAB’s expectations for compliance with the amended rules.
* a Q&A with senior representatives from the TTAB.

Presenters:

Cheryl Butler, Senior Counsel, USPTO Trademark Trial and Appeal Board
Cheryl Butler is Senior Counsel for TTAB Policy and Procedure and the TBMP Editor. Ms. Butler previously served as an Interlocutory Attorney and, prior to that, as a Trademark Examining Attorney. Ms. Butler received her J.D. from George Mason University School of Law and her B.S. in Geosciences from the University of Arizona.

Michael Webster, Interlocutory Attorney, USPTO Trademark Trial and Appeal Board
Michael Webster currently serves as an Interlocutory Attorney at the TTAB. Prior to joining the Board, Mr. Webster was a Trademark Examining Attorney at the USPTO for over fifteen years. He is a graduate of Regent University School of Law and earned his bachelor’s degree in Economics from Indiana University and an M.B.A. from Robert Morris University.

Uli Holubec, Senior Legal Editor, Practical Law Intellectual Property & Technology (Moderator)
Uli Holubec joined Practical Law from Quinn Emanuel Urquhart & Sullivan LLP, where she was a senior associate and handled a variety of trademark and other intellectual property matters. Uli previously was an intellectual property attorney at White & Case LLP and an intellectual property litigation associate at Lieberman & Nowak, LLP.

Michael Chiappetta, Senior Legal Editor, Practical Law Intellectual Property & Technology (Moderator)
Michael Chiappetta joined Practical Law from Fross Zelnick Lehrman & Zissu, PC, where he was counsel focusing on trademark and copyright litigation. Previously, he was an entertainment litigation associate at Troop Meisinger Steuber & Pasich, LLP in Los Angeles.

Register for the event.

In a federal lawsuit filed this week, Apple asserted that nearly all the iPhones, chargers and cables it surreptitiously purchased from online retailer Amazon were fakes, according to a Computerworld report.

Reporter Gregg Keizer quoted the complaint: “As part of its ongoing brand protection efforts, [Apple] has purchased well over 100 iPhone devices, Apple power products, and Lightning cables sold as genuine by sellers on Amazon.com and delivered through Amazon’s ‘Fulfillment by Amazon’ program. Apple’s internal examination and testing for these products revealed almost 90% of these products are counterfeit.”

Apple sued Mobile Star, a New York-based former Amazon supplier. The plaintiff said it purchased iPhone-related products that were advertised by Amazon as genuine Apple gear, complete with Apple copyrighted images and sometimes in packaging copied from real Apple accessories.

Read the article.

Bartonfalls LLC, an entity formed in August in the patent hotspot of East Texas, has sued 14 big media companies, claiming the media giants like CBS, NBC Universal and Bloomberg violated patented technology designed to switch automatically from one video display another, reports Ars Technica.

Reporter Joe Mullin explains that the patent, filed in 1997, “doesn’t talk about Web video or the Internet at all. Rather, it talks about switching between different video inputs when changing television programs.”

“Corporate documents show that Bartonfalls was formed as a Texas LLC in August,” according to the article. “Its business office is a virtual office in Plano, a city that’s just inside the borders for the Eastern District of Texas, the venue that it filed its lawsuits in. The only listed manager of Bartonfalls is a paralegal at a small Texas law firm, Stoddard and Welsh.”

Read the article.

Apple Inc. won an appeals court ruling that reinstates a patent-infringement verdict it won against Samsung Electronics Co., including for its slide-to-unlock feature for smartphones and tablets, reports Bloomberg.

The U.S. Court of Appeals for the Federal Circuit overruled a three-judge panel, saying the lower court was wrong to throw out the $119.6 million verdict in February. The 8-3 ruling sent the case back to the trial judge to consider whether the judgment should be increased based on any intentional infringement by Samsung, writes Susan Decker.

“The decision Friday comes less than a week before the U.S. Supreme Court considers another case Apple had filed against Samsung. That case, to be argued Tuesday in Washington, focuses on how much Samsung should pay for copying patented designs for Apple’s iPhone,” according to the Bloomberg report.

Read the article.

Fitch, Even, Tabin & Flannery LLP will host a complimentary webinar, “Recent Updates in Design Patent Law,” presented by Fitch Even partners Calista J. Mitchell and Joseph H. Herron. The webinar will take place on Wednesday, October 12, 2016, at 9 am PDT / 10 am MDT / 11 am CDT / 12 noon EDT.

Understanding the latest developments in case law and USPTO examination standards is important to drafting effective design patent applications. This webinar will address numerous current issues in U.S. design patent law. It may be of interest to those who seek to broadly protect products with design patents, as well as those who draft design patent applications, litigate design patents, or prepare freedom-to-operate or patentability analyses for design patent applications.

Our speakers will cover these topics and more:
• Recent court decisions involving design patents
• The role of obviousness in patentability and invalidity determinations
• Current trends in examination by the USPTO

CLE credit has been approved for California and Illinois and is pending in Nebraska. Other states may also award CLE credit upon attendee request.

Following the live event, a recording of the webinar will be available to view for one year at fitcheven.com.

Register for the webinar.

Acacia Research Corp., the largest publicly traded patent-assertion entity, won a $22.1 million verdict against Apple, reports Ars Technica.

An East Texas jury found that Apple infringed US Patent No. 8,055,820, owned by Acacia subsidiary Cellular Communications Equipment LLC. Reporter Joe Mullin writes that the patent describes a method of how cell phones can use “buffer status reporting” so that phone networks can optimize data usage. The patent originated at Nokia, which sold the patent to Acacia in 2013.

Acacia, in the class of companies that critics refer to as “patent trolls,” buys patents from others, splits the proceeds from litigation with the original patent owner. Acacia-related entities have filed hundreds of lawsuits.

“The company used to advertise a 50/50 split with patent owners and inventors, but its specific arrangement with Nokia is unknown,” according to the report. “The verdict, reached last week, is a validation of Acacia’s increasing interest, announced a few years back, in buying portfolios of patents from large companies, rather than individual inventors.”

Read the article.

By Keli Johnson Swan
Scott & Scott LLP

In a civil copyright infringement claim, many users of copyrighted material are surprised to learn that once the copyright owner has demonstrated that it owns a copyright in the work, the burden shifts to the copyright user to demonstrate that it had the right to use the work in the way it was using it. For copyrighted software use, this means that not only must the user have a valid license, the use case must fall within the scope of the license terms. Software publishers actively protect their copyrighted material by pursuing audits of its consumers either directly or through entities such as BSA|The Software Alliance, or the Software & Information Industry Association (“SIIA”).

There are two vital steps to proving a consumer is innocent of copyright infringement.

1. Providing proof of purchase documentation for the license.

The license agreement itself often provides the authority for the publishers to audit any consumer of its product, but there are usually little or no guidance in the license agreement for what proof will be acceptable in a license review. This is further complicated by the fact that the BSA and SIIA issue their own set of audit standards when investigating potential compliance gaps.

In order to demonstrate a license to use software that is acceptable to the BSA and SIIA in an audit, the consumer must provide a copy of an entitlement that shows the date purchased, price paid, software version and title, quantity, and the company name. Many consumers do not keep accurate records of software purchases, particularly for products that are very old. The auditing entity will presume there is no license unless the user can provide documentation of its license, regardless of the age of the software installed.

However, there are different types of documentation that may be used to prove ownership of a license, including, but not limited to:

a. Customer purchase history reports from vendors such as CDW and Dell;
b. Dell Service Tag Reports;
c. E-mail confirmations for software purchases;
d. Microsoft Licensing Statement;
e. Adobe Licensing Statement;
f. Autodesk Licensing Statement;
g. Software publisher agreements (ex. Microsoft EA);
h. Autodesk serial numbers (if registered correctly);
i. Hardware purchases with OEM operating systems or Microsoft Office software; or
j. Software registration confirmations.
It is always helpful to acquire a report from a vendor if possible to acquire a purchase history, or alternatively, a licensing statement from the publisher itself.

2. Demonstrating compliance with license terms.

In addition to providing evidence its licenses, a consumer often must demonstrate that it has complied with the terms of the license agreement for the software installed. For example, some Home or Student versions software specifically restricts commercial use, so if a business has these versions installed and is using it to generate revenue, the license is invalid because the use case is outside the scope of the license grant.

There are more complicated use cases that also violate the terms of license agreements, ranging from geographic restrictions, installing software on affiliate or related entities’ machines without approval, installing software on servers, or installing software on hosted servers without the appropriate licenses.

In order to avoid potential copyright infringement claims and monetary penalties, it is prudent for consumers to conduct regular internal audits, consistently retain all software purchase records, and closely evaluate the use cases to ensure compliance with the relevant license agreements.

Law Seminars International will hold the Fifth Seattle Comprehensive Two-Day Conference on Game Technology Law on Oct. 13-14, 2016. The conference will be at the Washington State Convention Center in Seattle and also will be broadcast via webcast.

The event is designed to benefit attorneys, business executives, and anyone else involved in the interactive entertainment industry. Information on the agenda, faculty bios, tuition, and CLE is available on the registration page.

On its website, Law Seminars International says participants will learn about:

~FTC regulatory update
~The current state of the industry for business models and financing sources
~New developments in the IP underpinnings for video games
~Tips for building a game as a brand
~Analysis of rights of publicity cases and clearance process tips
~Virtual/augmented reality opportunities and issues for the game industry
~Special privacy and data security issues for the game industry
~eSports and fantasy sports: the line between games of skill and gambling
~Virtual currency systems and related tax issues
~Tips for assembling a package that will be attractive to investors

Register or get more information.

Image by Ian Kennedy

A complimentary webinar hosted by Finnegan, Henderson, Farabow, Garrett & Dunner will discuss intellectual property issues for Internet of Things (IoT) technology and how to navigate through the IoT patent obstacle course.

The hour-long event will be Wednesday, Sept. 14, at 1 p.m. EDT.

Topics will include:

• What are the challenges in protecting IoT inventions?
• What makes an IoT patent valuable?
• How should a company deal with the more than 22,000 IoT-related patents and pending patent applications world-wide?

“Most industries have focused on cooperating with each other to solve the technical challenges in making a workable IoT ecosystem,” the firm says on its website. “But many businesses are getting ready for the intense competition that will undoubtedly follow after IoT becomes ubiquitous. Intellectual property rights and patents, including design patents, will play a major role in that competitive landscape.”

Register for the webinar.

Fitch, Even, Tabin & Flannery LLP will present a free webinar, “European Patent Filing Strategies: Choosing the Appropriate Option,” presented by Rudy I. Kratz and Tony Wray. The webinar will take place on Tuesday, August 30, 2016, at 9 am PDT / 10 am MDT / 11 am CDT / 12 noon EDT.

A number of patent filing strategies are available in Europe. Patent applications may be filed at the European Patent Office (EPO) and at national patent offices such as the UK Intellectual Property Office (UKIPO) and the German Patent and Trade Mark Office (DPMA). Utility model applications are another form of intellectual property protection that can be pursued in certain countries. Each option has its advantages and disadvantages, and some approaches may be more appropriate in certain circumstances based on cost and other concerns. Recent developments may also have an impact on which filing strategy makes the most sense.

The webinar will address the following topics:
• Summary of filing considerations at the EPO, UKIPO, and DPMA
• Advantages and disadvantages of specific filing strategies
• Effect of the UK vote to leave the European Union and the status of the Unitary Patent

CLE credit has been approved for California and Illinois and is pending in Nebraska. Other states may also award CLE credit upon attendee request.

Following the live event, a recording of the webinar will be available to view for one year at fitcheven.com.

Register for the webinar.

Apple Inc. has asked the U.S. Supreme Court to clear the way for the iPhone maker to secure hundreds of millions in damages from Samsung Electronics Co Ltd in a case over smartphone design patents, Reuters is reporting.

The feud over smartphone patents dates back to 2011, when Apple sued Samsung in a northern California court alleging infringement of the iPhone’s patents, designs and trademarked appearance.

“In its legal brief on Friday, Apple said Samsung had not provided evidence to support its argument that design patent damages should be decided on one component of a smartphone, rather than the entire product,” reports Dan Levine for Reuters. “Apple said there was no need for the Supreme Court to send the case back to a lower court for further proceedings.”

Samsung is facing a judgment of $548 million, of which $399 million involves design patents.

Read the article.

Ahmad, Zavitsanos, Anaipakos, Alavi & Mensing P.C. has been named best in class in patent litigation by Intellectual Asset Management Patent Survey in 2015 and again in 2016 and was named one of the 10 largest IP firms in Houston in 2016 by the Houston Business Journal.

In a release, the firm said AZA’s IP patent stable includes partners Demetrios Anaipakos, Amir Alavi and Steve Mitby; and Of Counsel David Warden, Brian E. Simmons and Scott W. Clark. Three on the team are board certified civil trial lawyers, and three on the team including associate Alisa Lipski are licensed as patent attorneys before the U.S. Patent and Trademark Office. A number of our lawyers have formerly been chemists, engineers, electrical engineers and biochemists. AZA lawyer Ifti Ahmed, a former engineer, served as a law clerk to both Judge Alan D. Lourie of the U.S. Court of Appeals for the Federal Circuit and to Judge John Ward of the U.S. District Court for the Eastern District of Texas.

Read the article.

In an article published by IPWatchdog, James Cosgrove, a legal analyst at Juristat, offers some guidance on general trends regarding appeals at the United States Patent and Trademark Office and shows practitioners how to use big data to win their appeals.

“In the patent world, the phrase ‘final rejection’ has something of a unique meaning,” Cosgrove writes. “While the uninitiated likely would assume that a final rejection would indicate the end of the patent prosecution process, it is actually just the beginning of the final stage of prosecution, when applicants must decide how hard they really want to fight for their patent.”

He says the applicant has three ways forward at that point, and discusses the third: appealing the examiner’s rejection.

Read the article.

President Obama has signed a bill allowing companies to sue to defend their trade secrets, reports USA Today. Those thefts cost the American economy more than $300 billion a year, according to the Commission on the Theft of American Intellectual Property.

“The Defend Trade Secrets Act of 2016, sponsored by Sen. Orrin Hatch, R-Utah, adds a civil component to the federal law making it a crime to steal intellectual property,” the newspaper report says. “Lawmakers said criminal penalties remain an important deterrent, but that the FBI’s resources to investigate and prosecute trade secret theft are limited.”

“Unfortunately, all too often, some of our competitors, instead of competing with us fairly, are trying to steal these trade secrets from American companies, and that means a loss of American jobs, a loss of American markets, a loss of American leadership,” Obama said.

Read the article.

Eric Schmidt took the witness stand Tuesday in Oracle’s copyright infringement lawsuit against Google, and he gave little ground during some tense exchanges with Oracle’s attorney, reports PCWorld.

In the suit, Oracle accuses Google of infringing its Java copyrights in the Android operating system. Schmidt is chairman of Alphabet, Google’s parent company.

Schmidt, the first witness to testify, was initially questioned by Google’s own attorneys, and testified that Google did not believe it needed a license to use 37 Java application programming interfaces for which Oracle owns the copyright. But on cross-examination, Oracle’s attorney asked him if Google’s APIs are treated as proprietary.

“Are you telling me that you don’t treat your APIs as proprietary?” Oracle attorney Peter Bicks asked Schmidt.

Read the article.

Fitch, Even, Tabin & Flannery LLP will hold a complimentary webinar, “So You Think You Know Patent Claims? Advanced Lessons in Patent Drafting and Analysis,” presented by Steven G. Parmelee and Allen E. Hoover. The webinar will take place on Thursday, Feb. 25, 2016, at 9 am PST / 10 am MST / 11 am CST / 12 noon EST.

The firm says that, even if you have practiced IP law for many years or are otherwise well-versed in what’s involved in patent drafting, you may be surprised by what you don’t know about patent claims.

Presenters will cover the following topics:
• The right and wrong way to use dependent claims to strengthen a patent
• How to avoid claim language that can impair the patent holder’s rights
• What you may not know about alternative claim language in patent claims

The firm says this webinar will be the first in an occasional series of “master classes” for experienced IP practitioners, patent owners, and others entrenched in the world of IP who already possess at least a basic understanding of patents and patent claims. It will be of interest to both those who analyze and litigate patents and those who draft patent applications.

CLE credit has been approved for California and Illinois and is pending in Nebraska. Other states may also award CLE credit upon attendee request.

Following the live event, a recording of the webinar will be available to view for one year at fitcheven.com.

Register for the webinar.