Finnegan Ip Law Podcast Series

On March 4th, the U.S. Patent and Trademark Office issued new guidelines on patent eligibility for subject matter derived from nature following the U.S. Supreme Court’s decisions in Myriad and Prometheus. Finnegan attorney Leslie McDonell discusses the new USPTO guidelines and the potential impact on the biotech and natural products industries.

In February, the U.S. District Court for the Eastern District of Texas (EDTX) adopted a new order to create a second “track” for patent infringement cases. This new “Fast Track” program provides litigants and the court with a choice for a faster, less expensive way of resolving patent cases. Finnegan attorneys Lionel Lavenue and Ben Cassady give an overview of the “Fast Track” program and recommendations for using it strategically.

It has been a year since the final provisions of the America Invents Act took effect in March of 2013. Finnegan partners Erika Arner and Mark Sweet provide some observations on the AIA implementation one year in. They discuss the first-inventor-to-file provision, trends in invention capture, the expansion of prior art, track one examinations, post-grant review proceedings at the PTAB, and impacts on district court patent litigation.

In August 2013, President Obama vetoed an ITC remedy that would have banned the import of some older models of the iPhone and iPad that infringed two of Samsung’s patents. Both patents had been declared as essential to certain telecommunications standards. That result dealt a blow to Samsung in its ongoing patent disputes with Apple. Some suggest this marks a new era of Presidential oversight of ITC decisions, others say it is a more narrow decision that is mostly relevant to companies wanting to use standards-essential patents at the ITC. Finnegan partner Smith Brittingham discusses the implications of the presidential veto.

Finnegan just released a new eBook, The Chemical and Pharmaceutical Innovation Report 2013. Available on Finnegan.com and edited by Finnegan partner Adriana Burgy, the eBook provides a practical summary of patent filing and litigation trends in the chemical, pharmaceutical, and biotechnology industries that may help inform patent strategy. In this podcast, Burgy provides a preview of the report. Download a complimentary copy of The Report 2013 eBook here.

The case of Lighting Ballast Control v. Philips challenges the Federal Circuit’s de novo standard of review in claim construction cases, one of the most important processes during a patent trial. In this podcast, Finnegan partner Dori Hines discusses the questions before the court and the potential impact once a decision is issued.

From Bilski v. Kappos, to Mayo v. Prometheus, to Association for Molecular Pathology v. Myriad Genetics, high-profile patent cases have become a regular feature of recent sessions of the U.S. Supreme Court. In the current Supreme Court session we’ll see a continuation of this trend. Finnegan partners Erika Arner and Barbara Rudolph discuss the growing presence of intellectual property cases before the Court.

Earlier this year, First Solar Inc. bought the intellectual property rights for solar panel technology from General Electric. This purchase highlights an interesting shift in the solar industry where competing companies are partnering to better position themselves in the market. Finnegan partner Eric Raciti discusses the implications of an IP purchase from a competitor and the current state of the solar industry.

Hamilton Beach Brands sued Sunbeam Products for infringement of a patent on the company’s slow cooker appliance. The Federal Circuit, in a 2-1 decision, affirmed the invalidation of Hamilton Beach’s portable slow cooker under the on-sale, or in-public-use, bar. Finnegan partner Eric Raciti discusses the lessons in this case for companies using original equipment manufacturer (OEM) suppliers under the old U.S. patent laws, and also a potential wrinkle in the future under the new America Invents Act.

With 3D printers becoming more mainstream, the ability to easily recreate everyday items poses a number of intellectual property concerns. Replicating toys, jewelry, and other objects could potentially infringe patents, trademarks, and copyrights. As the technology continues to gain acceptance, IP rights holders need to be aware of the potential ramifications. Finnegan attorneys Bob Yoches and Elizabeth Ferrill discuss IP considerations with the rapidly evolving 3D printing technology landscape.

The U.S. International Trade Commission (ITC) has become a key destination for both domestic and foreign intellectual property litigants. ITC cases go to trial faster than almost any forum in the world. This presents litigants with attractive benefits, but can also pose unique challenges. Finnegan attorneys Smith Brittingham and Mareesa Frederick discuss best practices to be prepared to litigate at the ITC.

A recent suit by electronics maker Fuhu, Inc. against Toys “R” Us over the two companies’ plans to market tablet computers for children provides a window into multiple aspects of current intellectual property law. Fuhu’s claims span trade secrets, trade dress, and trademark issues, and provide a recent example helping illustrate current trends in the respective case law. Finnegan attorney Naresh Kilaru discusses the case and the lessons that other companies can take from it.

One of the new provisions of the America Invents Act is inter partes review. This replaces inter partes reexamination and provides the opportunity to challenge patents that have been issued at any time during the life of the patent. Finnegan partner Anthony Tridico discusses the inter partes review process and how it could provide an alternative to litigation.

The new prioritized "Track One" examination, which is part of America Invents Act (AIA), offers companies the opportunity to "fast track" a patent for additional cost. The expedited review allows companies to be more competitive in the new first to file system and can shorten the wait time for USPTO review. Finnegan partner Jeffrey C. Totten discusses Track One examination and considerations for companies considering this new application track.

Among the latest new provisions of the America Invents Act (AIA) to take effect, are changes to the timing and requirements of an Inventor’s Oath or Declaration in a patent application. These changes offer significant opportunity for companies seeking patents to speed up the process. In this podcast, Finnegan partner Adriana L. Burgy discusses the changes to Inventor’s Oath under the AIA.

Online retailer DemStore.com was recently blocked from using President Obama's "Rising Sun" logo on unauthorized campaign merchandise, after the Obama for America campaign committee filed a trademark infringement lawsuit. The preliminary injunction states the company cannot use the trademarked campaign logo or "confusingly similar" images on its products. The case illustrates how intellectual property is becoming more important in political campaigns, but also brings up some questions around the purpose of trademarks. In this podcast, Finnegan partner Mark Sommers discusses the critical issues surrounding the Obama v. DemStore case. 

American Superconductor Corp. (AMSC) has engaged in unprecedented contract, copyright, and trade secret actions in several Chinese courts with its once largest customer in China, Sinovel Wind Group Co.  This and similar cases illustrate the challenges American companies face in protecting key intellectual property (IP) rights in foreign countries.  With a “business first, protection second” mindset, they sometimes forget that the laws governing IP often vary from country-to-country.  In innovation-heavy industries like renewable energy, cleantech, electronics, pharmaceuticals, life science, and information technology, where the state of a company’s IP can make or break its fortunes, it is crucial that companies understand the IP risks that exist in foreign markets and the necessary steps for protecting their IP. In this podcast Finnegan partners Ningling Wang and Ming Yang discuss the AMSC vs. Sinovel Wind Group Co. case, examine the implications, and provide recommendations for companies facing

Social networks such and Twitter and Facebook and 24/7 news coverage have made it easier than ever for someone to turn into an overnight sensation. A good example is Jeremy Lin of the New York Knicks.  After a succession of dazzling performances, ‘Linsanity’ erupted around Lin’s exceptional play, catapulting him from his brother’s couch to global superstardom in a matter of days. However, Lin’s quick ascent has been problematic for him from an intellectual property perspective, and presents a new facet to his remarkable story. In this podcast, Finnegan partner Mark Sommers discusses the trademark challenges Lin is facing, the options Lin has to address the situation and move forward, and key lessons to be learned from Lin’s experience.

The fashion industry continues to face a surge in sophisticated criminal counterfeiting operations–many are aggressive in their online efforts to market and sell luxury brand knockoffs. A recent court decision in the Southern District of New York granted broad injunctive relief to luxury brand retailer Tory Burch, who had filed suit after discovering more than 200 different websites selling counterfeit versions of its signature products. In this podcast, Finnegan partner Mark Sommers discusses the recent court decision, and the precedent it upholds in imposing measures against the next-generation methods and techniques counterfeiters are using to dodge liability.

A year ago, the U.S. Supreme Court handed down its long-awaited Bilski v. Kappos ruling. Finnegan partner Erika Arner was a member of the Finnegan team that represented Bilski before the Supreme Court and she co-authored an amicus brief to the Federal Circuit in the case on behalf of Accenture. In this podcast Ms. Arner will provide an overview of how the Bilski decision has affected the area of patentable subject matter.