Obviousness and the Patent Office’s Burden to Explain

After her strange trip down the rabbit hole, we might all be willing to cut Alice some slack for being confused in her response to the Caterpillar’s demand, “Explain yourself!” Lately, however, the Federal Circuit has become increasingly strict with the USPTO Board and examiners when they fail to explain adequately the basis for an obviousness ruling. In fact, a splash of recent decisions makes me wonder if this is mere ripple in Section 103 jurisprudence or a welcome wave of change.

Dilworth IP’s Frederick Spaeth to Present at the 33rd Annual Joint Patent Practice Seminar

Frederick Spaeth, Partner at Dilworth IP, will be speaking at the 33rd Annual Joint Patent Practice Seminar which will take place at the Crowne Plaza Times Square in New York on Thursday, April 27th. The annual event is hosted by the Joint Patent Practice Continuing Legal Education (JPPCLE), as a one-day seminar of featured speakers who offer comprehensive presentations on various recent developments in patent law; including case law, legislation, and various regulations. Among the featured speakers this year are the Honorable Richard Linn, Senior Circuit Judge of the US Court of Appeals for the Federal Circuit, and Andrew Hirshfeld, Commissioner for Patents for the USPTO. Fred’s talk will focus on the 2016 federal circuit decision Micrografx v. Google, Inc. illustrating the difficulty in obtaining a reversal of PTAB decisions.

Varsity Brands Prevails 6-2 Over Star Athletica In Battle Of The Uniforms

Late last month, the Supreme Court decided an interesting case at the very cusp of what constitutes a copyright-eligible design as opposed to an ineligible article of manufacture. See Star Athletica, LLC v. Varsity Brands, Inc. (No. 15-866). In 2010, the cheerleading clothing outfit behemoth Varsity Brands claimed that a competitor, Star Athletica, copied several of its cheerleading outfit designs (e.g., chevrons, stripes, etc.) and sued Star for copyright infringement under 17 U.S.C. §101 of The Copyright Act of 1976. The Act mandates that “the design of a useful article” is eligible for copyright if “such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”1 This aspect of the Act is commonly referred to as the “separate – identification and independent – existence” requirement or, put simply, the “Separability Test”. Varsity argued that since cheerleading uniforms (“the useful article”) could either contain or lack superficial designs, the designs themselves are in fact separate graphic works that make uniforms unique and are therefore subject to copyright protection. Counter to this position, Star claimed that the designs on a cheerleading uniform are inherent to the uniform and are not stand-alone, separate design elements.

Enhanced Oil Recovery Patents – 2016 (Part 2) Radiation-Assisted Oil Recovery

Enhanced oil recovery techniques can loosely be grouped into methods conducted at ambient temperatures and those at high temperature. Ambient temperature methods include techniques using water flooding, solvent or surfactant injection, and cold heavy oil production with sand (CHOPS). High-temperature techniques function by heating recoverable material in the reservoir to lower its viscosity and improve flowability. Such techniques typically use steam, i.e., steam injection in various ways, although radiation assisted oil recovery would also fall into this group. However, while conventional heat treatments using steam are effective, they can sometimes result in a wastewater stream that is not desirable. While radiation techniques may additionally utilize other injectable streams, they need not rely on a separate heat-input stream to transfer heat, so typically don’t generate the wastewater streams characteristic of steam injection.

Nanomedicine: A Vast Horizon on a Molecular Landscape – Part IX, Organs-on-a-chip II

Recently, Draper announced a three-year agreement with Pfizer. This collaboration focuses on developing effective disease models for testing potential drug candidates based on microphysiological systems, also known as “organs-on-a-chip”.

The organs-on-a-chip technology is a three-dimensional microfluidic based multi-cell co-culture system that models the physiological, mechanical, and molecular environment of the human body and mimics the physiological functions of human organs. This technology offers unique in vitro disease models for new drug screening and toxicology testing. This technology has attracted attentions not only from academic institutes but also from the pharmaceutical industry. One of the main reasons for this interest is the potential cost and time savings for drug research and the development process. As required by the FDA drug approval process, new drug chemical entities are tested in animals before going into human Phase I testing for the drug approval process. The preclinical animal testing process is tedious and extremely expensive. Additionally, animal models are not always predictive for characterizing drug safety in humans. About 40% of drug compounds fail in Phase I clinical trials (Clinical Development Success Rates 2006-2015, BIO Industry Analysis, June 2016). To address these challenges, organs-on-a-chip has been proposed as a novel method to develop human disease models and replace preclinical animal testing.

Dilworth IP Partner Serves as Keynote Speaker at 2017 CCSCNE Conference

Dr. Anthony Sabatelli, Partner at Dilworth IP, will be a keynote speaker at the 22nd Annual Consortium for Computing Sciences in Colleges, Northeast Region Conference (CCSCNE) on Saturday, April 8th at The College of Saint Rose in Albany, NY. The conference will bring together students and teachers from across the northeast for a day of paper presentations, talks, workshops, panels and tutorials on various topics relevant to the computing sciences. Dr. Sabatelli will join Pat Yongpradit of Code.org as one of this year’s keynote speakers, and will present a talk entitled Intellectual Property Basics for Entrepreneurs which will provide an important patent law guideline for those in the audience interested in protecting their ideas.

The Emergent Microbiome: Rebounding after a Series of Challenging Events

Over the past two years, we have been reviewing and reporting on technology and IP issues related to the emerging field of microbiome research. In this latest piece, we have taken a somewhat different approach, in focusing on the difficult clinical challenges faced by one of the key players in this area and the path forward they have announced to overcome these challenges.

Upcoming Free Webinar: Mark Thy Words: Advanced Trademark and Branding Strategies for Corporate Counsel

Frederick Spaeth of Dilworth IP will present a free webinar on Wednesday, May 3rd at 1:00 PM EDT. This installment in the Dilworth IP Webinar Series is entitled, “Mark Thy Words: Advanced Trademark and Branding Strategies for Corporate Counsel” and will focus on providing in-house counsel with sophisticated strategies for their company’s brand protection. Global companies face a long list of challenges when it comes to protecting their brands from confusion and counterfeiting in an environment where globalization and international trade still dominate. Trademark protection, including valuable non-traditional marks such as product design and packaging, is more important than ever. Employing a sophisticated US trademark strategy to protect your brand is a crucial component of any global enterprise’s overall business strategy. This webinar will give the corporate trademark counsel insight into some of the dynamic issues they face today and explore some of the avenues that may be pursued such as seeking monetary and injunctive relief in the US when protecting brands overseas. A brief overview of recent key US case law will also be discussed.

Frederick Spaeth Presents Talk at IP Law for the Non-IP Lawyer

Frederick Spaeth, Partner at Dilworth IP will be presenting a talk at the IP Law for the Non-IP Lawyer conference hosted by the Westchester/Southern Connecticut Chapter of the Association of Corporate Counsel (ACC) on Wednesday, April 5th at Withers Bergman in Greenwich, CT. The event will provide in-house counsel attorneys with a basic outline of intellectual property law to help them better understand their company’s IP needs. Fred’s talk will be on Trademarks and Copyrights, and will focus on emerging issues, brand defense and Fair Use.

Dilworth IP’s Dr. Anthony Sabatelli Attends 2017 BIO Legislative Day Fly-In

Dr. Anthony Sabatelli of Dilworth IP will join Dr. Susan Froshauer CEO of CURE (Connecticut United for Research Experience) for the 2017 BIO Legislative Day Fly-In on April 4th and 5th in Washington D.C. Biotechnology executives from across the country gather annually for this event to discuss their industry’s most important legislative issues with Members of Congress. On Tuesday, the Fly-in will begin with a legislative briefing and will be followed on Wednesday by visiting Capitol Hill for scheduled meetings with Congress. “I have enjoyed attending the Fly-In for the past several years,” Dr. Sabatelli said, “it is an important event which allows us to keep our legislature informed of the most relevant issues facing the Biotech Industry to ensure it has a secure path forward.”