Fitch Even News Feedhttp://full.fitcheven.com/?t=39&format=xml&stylesheet=rss&directive=0&records=20en-us16 Dec 2018 00:00:00 -0800firmwisehttp://blogs.law.harvard.edu/tech/rssIP Alert: Extended Patent Term Does Not Conflict with Double Patentinghttp://full.fitcheven.com/?t=40&an=86537&format=xml<p>Today, in <i><a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-2284.Opinion.12-7-2018.pdf">Novartis AG v. Ezra Ventures LLC</a></i>, the Federal Circuit issued a significant decision on the relationship between obviousness-type double patenting and patent term extension under 35 U.S.C. &sect; 156.</p> <p>Section 156 allows a drug manufacturer to elect a five-year extension for a patent covering one of its drugs. This extension is intended to offset the term of the patent during which the drug was subject to regulatory review by the FDA and thus was not marketable. A patentee may elect only one patent term extension under section 156 for any single drug. Where the assignee has multiple patents covering the same drug, the assignee can select which patent qualifies for the patent term extension.</p> <p>In 1997, Novartis received U.S. Patent No. 5,604,229, which claimed a drug for treating multiple sclerosis. Novartis elected this patent to receive the five-year term extension. The &rsquo;229 patent was a GATT transitional patent filed in 1994, and its normal expiration date was 17 years from its 1997 issue date. With the section 156 extension, the &rsquo;229 term was thus extended from 2014 to 2019.</p> <p>Novartis also owned U.S. Patent No. 6,004,565, which covered the same drug as the &rsquo;229 patent. The &rsquo;565 patent was filed in 1997 and its 20-year term expired in 2017.</p> <p>Novartis sued Ezra alleging infringement of the &rsquo;229 patent. Ezra asserted that the &rsquo;229 and &rsquo;565 patents conflicted for obviousness-type double patenting, arguing that the &rsquo;229 patent was invalid, or else Novartis should have disclaimed the patent term extending past the 1997 expiration date of the &rsquo;565 patent. Specifically, Ezra asserted that the section 156 extension effectively created an improper extension of the term of the &rsquo;565 patent. The district court ruled in favor of Novartis.</p> <p>On appeal, the Federal Circuit affirmed. Reviewing the statutory scheme of allowing the patentee to elect which patent to extend, the court concluded that Congress had expressed a decision to provide &ldquo;a flexible approach which gave the patentee the choice&rdquo; of which patent to extend for an individual drug. The court reasoned that Congress had acknowledged scenarios in which an entity will own multiple patents covering the same drug, only one of which is extended. For this reason, the court concluded, the section 156 extension of one patent cannot be vitiated by obviousness-type double patenting.</p> <p>The Federal Circuit further relied on one of its earlier decisions, <i>Merck &amp; Co. v. Hi-Tech Pharmacal Co.</i>, which found that patent term extension under section 156 extended the life of a patent despite a terminal disclaimer filed during prosecution. In <i>Merck</i>, the court distinguished 35 U.S.C. &sect; 156 from 35 U.S.C. &sect; 154, which governs patent term adjustment. Section 154 &ldquo;expressly excludes patents in which a terminal disclaimer was filed from the benefit of a term adjustment for PTO delays.&rdquo; The court reasoned that the absence of such provision in section 156 supported its position.</p> <p>This decision provides some clarity for the interplay between patent term extension and the doctrine of obviousness-type double patenting. For more information, please contact Fitch Even attorney <a href="https://www.fitcheven.com/?t=3&amp;A=9296&amp;format=xml&amp;p=5482">Donald R. Bunton</a>, author of this alert.</p> <p>&nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;&nbsp;</sup></b></p>IP Alerts07 Dec 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=86537&format=xmlIP Alert: PTAB Denies Institution of IPR Despite Finding Reasonable Likelihood of Prevailinghttp://full.fitcheven.com/?t=40&an=85822&format=xml<div ltr=""> <p>On November 7, in <i><a href="/2E8FB4/assets/files/Documents/ptab-filings.pdf">Chevron Oronite Company LLC v. Infineum USA L.P.</a></i>, the Patent Trial and Appeal Board (PTAB) denied institution of an <i>inter</i><i> partes</i> review (IPR) despite finding that the petitioner had demonstrated a reasonable likelihood of prevailing on some claims. The PTAB concluded that instituting a trial with respect to all claims when there is only a reasonable likelihood of prevailing on a subset of claims was &ldquo;not an efficient use of the Board&rsquo;s time and resources.&rdquo;</p> <p>In <i>SAS v. Iancu</i>, the Supreme Court <a href="https://www.fitcheven.com/?t=40&amp;an=76257&amp;anc=180&amp;format=xml&amp;p=5486">held</a> that when an <i>inter partes</i> review is instituted, the PTAB must decide the patentability of all of the claims challenged by the petitioner. The <i>Chevron</i> decision illustrates one PTAB panel&rsquo;s reaction to <i>SAS</i>.</p> <p>Chevron filed an IPR petition challenging on obviousness grounds all 20 claims of Infineum&rsquo;s U.S. Patent No. 6,723,685. The PTAB found that Chevron had demonstrated a reasonable likelihood of prevailing with respect to only two dependent claims. The panel found that Chevron&rsquo;s argument relied on a claim construction that the panel did not agree with generally. However, the two dependent claims could reasonably be read as limited to the claim construction relied upon by Chevron. Consequently, the PTAB found Chevron to have a reasonable likelihood of prevailing on only the two dependent claims.</p> <p>Despite finding that Chevron had met the requisite standard for institution for these two claims, the PTAB denied institution nonetheless. The PTAB explained that the USPTO is never compelled to institute an IPR proceeding and that the institution decision is always a matter within its discretion. Referring to <a href="https://www.uspto.gov/sites/default/files/documents/guidance_on_the_impact_of_sas_on_aia_trial_proceedings_%20%28april_26%2C_2018%29.pdf">post-<i>SAS</i> guidance</a> from the USPTO, the PTAB concluded that it would not be an efficient use of its resources to institute a trial for all challenged 20 claims when there was only a reasonable likelihood of prevailing with respect to two of those claims.</p> <p>This decision is noteworthy as a case in which the all-or-nothing post-<i>SAS</i> standard might have a led to a different outcome in an institution decision than under the previous understanding of the rules, where the PTAB could institute an IPR on only some of the challenged claims. It remains to be seen whether the PTAB will expand its use of discretionary denials.</p> <p>For more information on this ruling, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=3766&amp;format=xml&amp;p=5482">Karen J. Wang</a>.</p> <p><em>&mdash;F</em><i>itch Even law clerk Zachary Van Engen contributed to this alert.<br /> <br /> </i></p> <p><b>Fitch Even IP Alert<sup>&reg;<br /> </sup></b></p> </div>IP Alerts16 Nov 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=85822&format=xmlIP Alert: Assignor Estoppel Does Not Apply in IPR Proceedingshttp://full.fitcheven.com/?t=40&an=85780&format=xml<p>On November 9, in <i><a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1525.Opinion.11-9-2018.pdf">Arista Networks, Inc. v. Cisco Systems, Inc</a></i>., the Federal Circuit held that assignor estoppel does not apply in <i>inter partes</i> review (IPR) proceedings.</p> <p>Arista petitioned for IPR review of a patent owned by Cisco. The subject matter of the patent was invented by a Cisco employee, Dr. David Cheriton. Dr. Cheriton later left Cisco to co-found Arista Networks, a Cisco competitor. He has since resigned from his position there.</p> <p>Cisco argued that Arista could not file an IPR petition due to the common law doctrine of assignor estoppel. Generally, the doctrine of assignor estoppel prevents a party who assigns a patent or is in privity with the assignor from challenging the validity of the assigned patent in later litigation. The doctrine is premised on the notion that, having accepted value for the patent, the assignor cannot later assert that the patent has no value because it is invalid. In its institution decision, the PTAB rejected Cisco&rsquo;s argument, concluding that the assignor estoppel doctrine was inapplicable. The PTAB went on to invalidate some of the claims of the challenged patent. Both parties appealed, Cisco asserting that the PTAB had erred in not recognizing the doctrine of assignor estoppel.</p> <p>The Federal Circuit first addressed whether the PTAB&rsquo;s decision on assignor estoppel was an issue that was subject to judicial review. Patentability assessments in the PTAB&rsquo;s decision to institute <i>inter partes</i> review are generally not subject to judicial review, and in this case the assignor estoppel issue had been presented in the institution decision. But the Federal Circuit concluded that assignor estoppel is unrelated to the PTAB&rsquo;s preliminary patentability assessments, making it similar to other issues (e.g., time-bar) that are reviewable even if decided in an institution decision.</p> <p>The Federal Circuit ultimately agreed with the PTAB that the doctrine of assignor estoppel is unavailable in the IPR context. The court focused its analysis on the language of section 311(a) that states &ldquo;In General.&mdash; Subject to the provisions of this chapter, a person who is not the owner of a patent may file with the Office a petition to institute an inter partes review of the patent.&rdquo; Arista argued that if Congress had intended to allow assignor estoppel, it would have drafted the statute to something narrower than &ldquo;a person who is not the owner of a patent.&rdquo; The court agreed, noting that by its plain language the statute &ldquo;unambiguously leaves no room for assignor estoppel in the IPR context, given that the statute allows any person &lsquo;who is not the owner of the patent&rsquo; to file an IPR.&rdquo;</p> <p>The court further observed that Congress has expressly incorporated equitable doctrines in other statutes, such as the statute governing International Trade Commission investigations. But Congress did not incorporate any equitable doctrines into section 311 governing IPRs. The court found this to be further evidence of Congress&rsquo;s intent to not allow assignor estoppel to apply in the IPR context.</p> <p>This decision is significant because it forecloses one potential line of defense that patent owners might otherwise have asserted against an IPR petition. Conversely, the decision opens an avenue of attack for a patent challenger who might be barred from challenging the patent in court because of assignor estoppel.</p> <p>For more information on this ruling, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a>, author of this alert.<br /> &nbsp; <br /> <em>&mdash;Fitch Even law clerk Zachary Van Engen contributed to this alert.</em><br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts14 Nov 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=85780&format=xmlFitch Even Welcomes New Attorneys to Chicago Officehttp://full.fitcheven.com/?t=40&an=85746&format=xml<p>Fitch, Even, Tabin &amp; Flannery LLP is pleased to announce that Evan Kline-Wedeen, Vincent R. Meyer, and Kerianne A. Strachan have joined the firm&rsquo;s Chicago office as associates.</p> <p>A registered patent attorney, <a href="https://www.fitcheven.com/?t=3&amp;A=16703&amp;format=xml&amp;p=5482">Evan Kline-Wedeen</a> currently focuses his practice on patent preparation and prosecution, intellectual property litigation, patent post-issuance proceedings, and product clearance and legal opinions. His technical experience includes biomedical engineering, mechanical engineering, and material science. Evan earned his J.D. from Chicago-Kent College of Law, graduating <i>magna cum laude</i> in 2018. While attending law school, he provided pro bono legal assistance as a volunteer law clerk at the Chicago-Kent Patent Hub and also spent a year working as a legal research assistant at The Law Lab at Chicago-Kent. Evan holds a B.S. in Bioengineering from the University of Illinois at Chicago.</p> <p><a href="https://www.fitcheven.com/?t=3&amp;A=18118&amp;format=xml&amp;p=5482">Vincent R. Meyer</a>&nbsp;assists clients with patent preparation and prosecution, product clearance and legal opinions, and intellectual property litigation. Industries he serves include food science, mechanical engineering, electrical devices, medical devices, and biotechnology. Vince graduated <i>cum laude</i> from the University of Illinois College of Law in 2018 and earned a B.S. degree in Bioengineering, <i>magna cum laude</i>, from the University of Toledo College of Engineering in 2015. Vince did pro bono work at the university&rsquo;s IP clinic during law school and was an R&amp;D intern with a multinational medical device manufacturer and a large government facility during his undergraduate years.</p> <p><a href="https://www.fitcheven.com/?t=3&amp;A=16851&amp;format=xml&amp;p=5482">Kerianne A. Strachan</a>&nbsp;focuses her practice on domestic and foreign trademark prosecution, clearance, enforcement, and brand protection. She counsels clients in industry sectors including consumer products, household appliances, retail, and educational services. In 2018 Kerianne earned her J.D. from Tulane Law School, where she was class president of the Student Bar Association and senior business editor of the <i>Tulane Journal of Technology &amp; Intellectual Property</i>. Kerianne served as an extern for the Honorable Bernadette D&rsquo;Souza of the Orleans Parish Civil District Court. She was appointed first as a law clerk with the Tulane University Legal Assistance Program and then its director. Kerianne holds a B.S. in Business from Marist College, graduating <i>cum laude</i> in 2009.</p> <p>We are delighted to welcome Evan, Vince, and Kerianne to the Fitch Even team!</p>Firm News13 Nov 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=85746&format=xmlIP Alert: Copyright Office Grants Jailbreaking Exemptions to the DMCAhttp://full.fitcheven.com/?t=40&an=83921&format=xml<p>In 1998, the United States Congress enacted the Digital Millennium Copyright Act (DMCA). One of the most controversial provisions in the DMCA has been the anti-circumvention measures, which make unlawful the reverse engineering of technological measures that are used to prevent access to copyrighted works. In recognition of the potential for the overreach of this particular provision, Congress provided an exception to the prohibition on reverse engineering under which proponents can request an exemption to this prohibition in cases where the prohibition is likely to hurt users&rsquo; ability to make non-infringing uses of particular classes of copyrighted works. These exemptions are temporary for three years.</p> <p>A variety of exceptions have been granted over the years, including, for example, certain compilations of internet locations blocked by filtering software, certain computer programs protected by dongles, certain video games in formats that have become obsolete, and certain ebooks.</p> <p>On October 26, 2018, in a <a href="https://www.federalregister.gov/documents/2018/10/26/2018-23241/exemption-to-prohibition-on-circumvention-of-copyright-protection-systems-for-access-control">final rule</a> published by the U.S. Copyright Office and the Library of Congress, the Librarian of Congress renewed exceptions for certain people who</p> <ul> <li>repair digital devices, including automobiles, agricultural mechanized vehicles, commercial vehicles, and home appliances,</li> <li>use video clips,</li> <li>jailbreak and modify smartphones and all-purpose mobile devices, or</li> <li>conduct security research to investigate and correct flaws on certain devices.</li> </ul> <p>In regard to jailbreaking, the Librarian has renewed and expanded a prior exemption for gaining access to the operating system of a smartphone or all-purpose mobile computing device to install and execute software that could not otherwise be installed or executed on that device or to remove preinstalled software that could not otherwise be removed. The Librarian has expanded this exemption to include voice assistant devices such as Apple HomePod, Google Home, and Amazon Echo.</p> <p>In explaining the decision, the Librarian noted that while piracy of streaming content is a significant concern, there was insufficient evidence to conclude that allowing jailbreaking of voice assistants created a greater risk of piracy than exists concerning other devices for which an exemption has previously been granted.</p> <p>Of additional note, the Librarian expanded other exemptions as well. For example, the exemption for automobiles, agricultural mechanized vehicles, commercial vehicles, and home appliances now permits third parties to reverse engineer for purposes of diagnosis, repair, and lawful modification, while previously only the owner benefitted from this exemption.</p> <p>For more information on this final rule, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2596&amp;format=xml&amp;p=5482">Thomas F. Lebens</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts07 Nov 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=83921&format=xmlFitch Even Partner David Gosse Appointed to Leadership of AIPLA PTAB Trial Committeehttp://full.fitcheven.com/?t=40&an=83827&format=xml<p>Fitch Even partner <a href="http://www.fitcheven.com/?t=3&amp;A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a> was recently appointed Co-Vice Chair of the <a href="https://www.aipla.org/">American Intellectual Property Law Association</a> (AIPLA) PTAB Trial Committee. Dave will serve in this role through October 2020.</p> <p>The PTAB Trial Committee is charged with providing up-to-date information and CLE programs on significant decisions and trends related to <i>inter partes</i> proceedings before the USPTO Patent Trial and Appeal Board (PTAB). The committee considers rules, regulations, and decisions related to PTAB proceedings and, when appropriate, makes recommendations regarding amicus briefing and comments submitted by AIPLA to the PTAB.</p> <p>Dave also continues to serve as an appointed member of AIPLA&rsquo;s Special Committee on Education Coordination.</p> <p>Dave has a diverse IP law practice encompassing both the acquisition and the enforcement of patent rights, including post-grant proceedings before the USPTO Patent Trial and Appeal Board.</p>Professional Activities05 Nov 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=83827&format=xmlIP Alert: Federal Circuit Clarifies Secondary Meaning and Infringement Issues for Product Design Trade Dresshttp://full.fitcheven.com/?t=40&an=83804&format=xml<p>On October 30, in <i><a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2497.Opinion.10-30-2018.pdf">Converse, Inc. v. International Trade Commission</a></i>, the Federal Circuit issued a significant decision in the law of product design trade dress.</p> <p>Converse received a trademark registration on September 10, 2013, for a mark that &ldquo;consists of the design of the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other.&rdquo; Converse asserted that its first use of this trademark was in 1932. Converse&rsquo;s well-known shoe design is shown below:</p> <p align="center"><img src="http://full.fitcheven.com/2E8FB4/assets/images//Converse.png.jpg" hspace="0" vspace="0" align="absmiddle" alt="" border="0" width="308" height="238" /></p> <p>Converse filed an ITC complaint alleging trade violations grounded in trademark infringement against numerous companies allegedly importing infringing shoes. Converse asserted both its registered trademark and common-law rights.</p> <p>The ITC required Converse to demonstrate that its mark had acquired secondary meaning. Converse presented evidence including use of the shoe design since 1932. The ITC disagreed with the evidence, determining that both the registered and common law trademark were invalid as not having acquired secondary meaning. The ITC further concluded that if the mark <i>had</i> been valid, then it would be infringed.</p> <p>On appeal, the Federal Circuit held that the ITC had committed a series of errors. The ITC first failed to determine the relevant date for assessing whether secondary meaning exists. The court held that &ldquo;the party asserting trade-dress protection must establish that its mark had acquired secondary meaning before the first infringing use by each alleged infringer.&rdquo;</p> <p>The Federal Circuit then explained that Converse had different rights, including when it had the burden of establishing secondary meaning between alleged infringers who began infringing before Converse obtained its trademark registration and those who began afterward. Although the ITC correctly concluded that Converse was required to establish secondary meaning, there is a presumption that a registered mark has secondary meaning, and therefore the accused infringer bears the burdens of proof establishing the absence of secondary meaning. On the other hand, for the period before registration, there is no presumption of secondary meaning, and so Converse carries this burden.</p> <p>The Federal Circuit also concluded that the ITC had applied the wrong legal standard in its determination of secondary meaning. The court clarified that to determine whether a mark has acquired secondary meaning, the following factors must be weighed: (1) association of the trade dress with a particular source by actual purchasers (typically measured by customer surveys); (2) length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of the product embodying the mark. The court stated that &ldquo;[a]ll six factors are to be weighed together in determining the existence of secondary meaning.&rdquo; The secondary meaning analysis seeks to determine what is in the minds of consumers as of the relevant date (i.e., first infringing use), and the factors, specifically the second factor, must be applied with this purpose in view.</p> <p>Having explained this standard, the Federal Circuit then remanded to consider whether Converse&rsquo;s mark had acquired secondary meaning at the time of each first infringing use by each intervenor. Converse had not sought to introduce such evidence before the ITC, but the court concluded that Converse had not waived the right to do so given the clarifying nature of this opinion.</p> <p>The Federal Circuit further explained what is meant by &ldquo;exclusivity of use.&rdquo; Drawing from the USPTO&rsquo;s standard for prima facie evidence of distinctiveness&mdash;i.e., &ldquo;proof of substantially exclusive and continuous use thereof as a mark by the applicant in commerce for the five years before the date on which the claim of distinctiveness is made&rdquo; (15 U.S.C. &sect; 1052(f))&mdash;the court held that the ITC should rely principally on uses within the five years preceding the relevant date. More specifically, for parties seeking to attack the validity of Converse&rsquo;s registration, the ITC must examine secondary meaning within the five years prior to registration, while for Converse&rsquo;s unregistered mark, this five-year period is measured from the date of the first alleged infringement.</p> <p>Regarding the ITC&rsquo;s determination of infringement, the Federal Circuit held that in the context of trade-dress infringement, accused products that are not substantially similar cannot infringe. The court instructed the ITC on remand to consider whether the accused products are substantially similar to the mark when undertaking the infringement analysis. In this regard, the court observed that the presence of a competing party&rsquo;s brand name on the competitive product was not dispositive but was a factor that should be considered on remand. The court rejected arguments that Converse was required to have proven reputational harm and that the mark was nonfunctional.</p> <p>This case provides clarity on how the Federal Circuit will analyze secondary consideration and infringement issues for product designs.</p> <p>For more information on this ruling, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2588&amp;format=xml&amp;p=5482">Mark W. Hetzler</a>, author of this alert.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts02 Nov 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=83804&format=xmlIP Alert: Eleventh Circuit's Decision Clarifies Scope of "Zone of Indeterminacy" Materialhttp://full.fitcheven.com/?t=40&an=83667&format=xml<p>On October 19, in <i><a href="http://media.ca11.uscourts.gov/opinions/pub/files/201711589.pdf">Code Revision Comm&rsquo;n v. Public.Resource.Org, Inc.</a></i>, the Eleventh Circuit considered the issue of whether a state&rsquo;s annotations to its legislative code may be copyrighted. Under a long line of decisions in copyright law, state codes and statutes cannot be copyrighted. Courts have held that such materials represent an exercise of sovereign state authority whose authorship is attributed to the people of the state generally. In contrast, privately authored comments about state laws face no such restrictions, are not the exercise of sovereign authority, and can be copyrighted. The line between what constitutes state-authored codes and privately authored comments can be blurry, as illustrated by previous cases involving privately authored building codes that have been adopted as law.</p> <p>This case demonstrates the difficulty in ascertaining what may and may not be copyrighted. The Official Code of Georgia Annotated (OCGA) is an annotated compilation of statutes that is published and maintained by LexisNexis Group, a private entity. The Code Revision Commission, which is backed by the Georgia General Assembly, supervises the work of Lexis and exercises final editorial control over the contents of the OCGA. An entity identified as Public.Resource.Org (PRO), a nonprofit organization, purchased volumes of the print version of the OCGA and uploaded them to its website to be freely accessed by the public.</p> <p>The Commission sued PRO seeking an injunction. PRO filed a counterclaim seeking a declaratory judgment, asserting that there was no valid copyright in any portion of the OCGA because it &ldquo;is in the public domain.&rdquo; The district court granted the Commission&rsquo;s motion for partial summary judgment and denied PRO&rsquo;s motion, finding that the annotations in the OCGA lacked the force of law and thus were not public domain material. PRO appealed.</p> <p>The Eleventh Circuit reversed. The court concluded that the annotations in the OCGA were not copyrightable because, in its view, these annotations were constructively authored by the state and &ldquo;sufficiently law-like so as to be properly regarded as a sovereign work.&rdquo; In its analysis of the ownership of the work, the court referred to several Supreme Court cases to define the term &ldquo;authorship&rdquo; as referenced in the Copyright Act. One such case, <i>Banks v. Manchester</i>, established that &ldquo;authorship&rdquo; is directly correlated to public policy principles that endorse free access to interpretations of the law. The <i>Banks</i> case has been construed to signify that the &ldquo;law,&rdquo; whether codified via legislative act or contained in judicial opinions, is in the public domain and not amenable to copyright.</p> <p>The Eleventh Circuit identified three factors in characterizing the authorship of the OCGA: the identity of the public officials who created the work, the authoritativeness of the work, and the process by which the work was created. The court initially characterized the OCGA as existing in a &ldquo;zone of indeterminacy . . . between edicts that carry the force of law and those that do not,&rdquo; a zone that the court characterized as a &ldquo;small band&rdquo; of circumstances in which &ldquo;a government work may not be characterized as law, and yet still be so sufficiently law-like as to implicate the core policy interests undergirding <i>Banks</i>.&rdquo;</p> <p>The court concluded that Georgia&rsquo;s legislative body created the annotations in its direct exercise of sovereign authority, a factor favoring public domain treatment. Additionally, the courts regarded the annotations as authoritative sources, and in fact these annotations were adopted as part of the laws of Georgia through a legislative process. The court found it significant that the Georgia legislature voted to make the OGCA the official codification of Georgia&rsquo;s laws. &ldquo;In other words,&rdquo; the court held, &ldquo;the OCGA annotations are not only authored at the direction and under the close supervision of the Georgia General Assembly, but they also obtain their peculiar status as official annotations because they are adopted annually by the General Assembly.&rdquo; Based on the above, the court determined that the OCGA was public domain material and not copyrightable.</p> <p>The court cautioned that not all materials authored by a state government employee are in the public domain: &ldquo;[T]he mere fact that a work was created by a state-paid employee in his capacity as an employee is not enough to trigger the rule in <i>Banks</i>.&rdquo; Rather, there must be &ldquo;[s]omething more.&rdquo; &ldquo;Specifically,&rdquo; the court held, &ldquo;the government official must be entrusted with unique powers beyond those possessed by the typical government employee, such as the power to pronounce official interpretations of the law.&rdquo; But the OGCA easily met this test because it was endorsed by Georgia&rsquo;s legislators. &ldquo;The annotations cast an undeniable, official shadow over how Georgia laws are interpreted and understood. Indeed, Georgia&rsquo;s courts have cited to the annotations as authoritative sources on statutory meaning and legislative intent.&rdquo;</p> <p>This noteworthy decision will provide some guidance for courts wrestling with questions about whether other law-like materials can be subject to copyright protection.</p> <p>For more information on this decision, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2589&amp;format=xml&amp;p=5482">Allen E. Hoover</a>.</p> <p><i>Fitch Even law clerk Kerianne A. Strachan contributed to this alert.<br /> </i><br /> <b><br /> Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts29 Oct 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=83667&format=xmlIP Alert: New PTAB Procedures for Motions to Amendhttp://full.fitcheven.com/?t=40&an=82074&format=xml<p>Today the USPTO released a request for comments on <a href="https://s3.amazonaws.com/public-inspection.federalregister.gov/2018-23187.pdf">Motion to Amend Practice and Procedures in Post-Grant Proceedings under the America Invents Act before the Patent Trial and Appeal Board</a> (PTAB). The request also seeks input addressing whether petitioners should bear the burden of proving unpatentability of amended claims. These amended procedures will be implemented in a proposed pilot program shortly after the comment deadline of December 14, 2018.</p> <p>The USPTO notes that under current procedures, motions to amend have only been pursued in 10% of all post-grant proceedings, and the PTAB has denied 90% of the motions on which it has issued decisions.</p> <p>Under the revised procedures, the patent owner would have the opportunity to file a motion to amend after institution of the trial. The petitioner would file a response to the motion, and the PTAB would issue a preliminary decision. The preliminary decision would address whether the motion meets statutory and regulatory requirements and whether the amended claims are patentable. The preliminary decision would not be binding on the PTAB.</p> <p>Two alternative procedures would be available after the preliminary decision. Under the first alternative, if the preliminary decision is unfavorable to the patent owner, the patent owner would have the opportunity to file either a reply or a revised motion to amend. The petitioner would then file a sur-reply or a response to the revised motion, respectively.</p> <p>Under the second alternative, if the preliminary decision is favorable to the patent owner, the petitioner would have the opportunity to file a reply. The patent owner would then file a sur-reply in response.</p> <p>Under either alternative, the new procedures allow the PTAB to solicit the assistance of a patent examiner if the petitioner ceases participation in the trial. The examiner would submit a nonbinding advisory report on the patentability of the substitute claims based on evidence already in the record and any art identified in searches by the examiner. The examiner would not conduct an additional search on the original claims or evaluate credibility of witnesses.</p> <p>The USPTO is seeking comment by December 14, 2018, on numerous topics related to the proposed procedure, including appropriate deadlines for the various briefs to be filed. Fitch Even attorneys will continue to monitor changes to these procedures as the USPTO develops the pilot program.</p> <p>For more information on this ruling, please contact Fitch Even partner <a href="https://www.fitcheven.com/?t=3&amp;A=2585&amp;format=xml&amp;p=5482">David A. Gosse</a>, author of this alert.<br /> &nbsp;<br /> <br /> <b>Fitch Even IP Alert<sup>&reg;</sup></b></p>IP Alerts26 Oct 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=82074&format=xmlIP Alert: Supreme Court to Consider Government Initiation of AIA Reviewshttp://full.fitcheven.com/?t=40&an=82112&format=xml<p>Today the U.S. Supreme Court granted a petition for a writ of certiorari in <i>Return Mail, Inc. v. U.S. Postal Service</i>. The Court will consider this question: Whether the government is a &ldquo;person&rdquo; who may petition to institute review proceedings under the AIA.</p> <p>The case arose when the U.S. Postal Service initiated covered business method review proceedings against a patent held by Return Mail. Return Mail contends that the federal government, and by extension the postal service, may not initiate such proceedings &ldquo;because the government is not a 'person' as that term is ordinarily used, and there is no evidence that Congress intended to depart from the default rule in the AIA.&rdquo;</p> <p>Fitch Even will report once the Court has issued its decision.<br /> &nbsp;</p> <p><b>Fitch Even IP Alert</b><sup><b>&reg;</b></sup></p>IP Alerts26 Oct 2018 00:00:00 -0800http://full.fitcheven.com/?t=40&an=82112&format=xml