Newsletter


03

Jan 2020

Are State Legal Texts with Annotations Copyrightable? The U.S. Supreme Court to Decide in Georgia v. Public.Resource.Org

By Califf Cooper 繁體中文 The Supreme Court recently heard oral arguments to decide whether Georgia’s annotated version of the Georgia legal code is protected by copyright.  The case stems from Public.Resource.Org publishing the full annotated version of the code online and Georgia’s subsequent case for copyright infringement. The State of Georgia contracted with LexisNexis to produce and publish the annotated version of the state’s legal...

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10

Dec 2019

USPTO’s Administrative Patent Judges Not Constitutionally Appointed

By David Forman The Appointments Clause of the U.S. Constitution governs the appointment of “Officers of the United States.”  U.S. Const. art. II, §2, cl. 2 provides: [The President] shall nominate, and by and with the Advice and Consent of the Senate, shall appoint Ambassadors, other public Ministers and Consuls, Judges of the supreme Court, and all other Officers of the United States, whose Appointments...

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10

Dec 2019

Trademark Infringement Findings in ITC Investigations Without Actual Confusion or Consumer Survey Evidence

By Tammy Dunn 繁體中文 Over the past few years, Segway, Inc., the maker of two-wheeled motorized personal vehicles (as seen in U.S. Patent No. 8,830,048) has successfully litigated against competitors that were infringing its patents. In March 2016, Segway won the rare remedy of a General Exclusion Order (GEO), issued by the International Trade Commission after an investigation concluded in findings that several companies were...

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10

Dec 2019

With Billions of Dollars On the Line, The Supreme Court Will Weigh in On Oracle v. Google Copyright Java Case

By Califf Cooper 繁體中文 The Supreme Court recently granted a writ of certiorari to rule on the nearly decade long fight between Google and Oracle regarding the copyright infringement lawsuit centered on Google’s Android operating system being built on stolen code from the Java software platform.  Google calls the case, “the copyright case of the decade.”  The dispute revolves around Google’s verbatim copying of 11,500...

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01

Nov 2018

PTAB Replaces BRI Standard with Phillips Standard

By Suzanne Lecocke On October 11, 2018, the United States Patent and Trademark Office (USPTO) published its final rule entitled “Changes to the Claim Construction Standard for Interpreting Claims in Trial Proceedings Before the Patent Trial and Appeal Board.”  The final rule, applicable to Inter Partes Review (IPR), Post Grant Review (PGR), and Covered Business Method (CBM) Review, will become effective on November 13, 2018....

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01

Nov 2018

Hangzhou High-Tech Zone (Binjiang) Science and Technology Bureau and Osha Liang LLP Signed a Strategic Cooperation Agreement

By Han-Mei Tso On September 5, 2018, Mr. John Osha, the managing partner of Osha Liang LLP (hereinafter “Osha Liang”), and Ms. Han-Mei Tso, the chief representative of Osha Liang Hangzhou Representative Office (hereinafter “Osha Liang Hangzhou”) met with Hangzhou High-Tech Zone (Binjiang) Science and Technology Bureau (hereinafter “Science and Technology Bureau”).  During the meeting, the two parties signed a strategic cooperation framework agreement to...

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01

Nov 2018

The Effect and Application of China’s Guiding Cases

By Han-Mei Tso In 2017, Osha Liang Newsletter published three articles discussing patent-related guiding cases issued by the Supreme People’s Court of China (hereinafter “SPC”), i.e., Guiding Case No. 83[1], Guiding Case No. 84[2], and Guiding Case No. 85[3].  This article will further discuss the nature and effect of guiding cases within China’s legal system and explain how to implement IP-related guiding cases into Chinese...

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01

Nov 2018

The Federal Circuit Provides Guidance for Obviousness Decisions at the PTAB: Provide an Explanation and be Consistent

By  Payal Majumdar In Emerson Electric Co. v. SIPCO, LLC, No. 2017-1866 (Fed. Cir. August 29, 2018), the U.S. Court of Appeals for the Federal Circuit provides valuable guidance for panels of judges at the United States Patent Trial and Appeal Board (PTAB).  In this nonprecedential court decision, the Federal court has vacated and remanded a PTAB decision for being inadequate in explaining its reasoning...

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01

Nov 2018

Changes in the Guidelines for Examination

By Yann Gloaguen The European Patent Office (EPO) has recently published the annual update of its Guidelines of Examination (hereinafter “EPO update”), which will come into force on November 1st, 2018.  In particular, the EPO update includes changes to unity of invention requirements and the patentability of mathematical methods. Changes to Unity of invention Requirements: Under the European Patent Convention (EPC), a European patent application must...

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01

Oct 2018

Not Simply Renamed – “SIPO” becomes “CNIPA”

By: Han-Mei Tso On September 3, 2018, the State Intellectual Property Office of China announced on its website[1] that the English name of the Chinese governmental body has changed from the “State Intellectual Property Office” (“SIPO”) to the “China National Intellectual Property Administration” (“CNIPA”).  Accordingly, the agency’s English abbreviation of the bureau has changed from “SIPO” to “CNIPA” as well.  The website domain has also...

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01

Oct 2018

New French Provisions Impacting National Intellectual Property Rights

By: Francesca Giovannini New legislative provisions affecting French intellectual property (IP) rights are under discussion.  In particular, these provisions are contained in a proposed law known as “Action Plan for Business Growth and Transformation” (in French: PACTE) currently examined by the parliament and in a decree the government intends to issue shortly.  Once the bill is finalized and passed and the decree is issued, the...

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01

Oct 2018

U.S. CAFC’s Solidified Decision of the Interpretation of Inter Partes Review (IPR) Time Bar under 35 U.S.C. § 315(b)

By: Yen-Kai (Eldwin) Hseu The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) recently decided the case Luminara Worldwide, LLC v. Iancu, No. 17-1629 (Fed. Cir. 2018).  The Luminara Worldwide decision provides important insight into the Federal Circuit’s interpretation for the Inter Partes Review (IPR) time bar under 35 U.S.C. § 315(b). The IPR time bar provision of the America Invents Act, 35...

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01

Oct 2018

The Music Modernization Act: A Copyright Update for a Digital Age

By: Louis Bonham and James Carlson The United States Congress has passed the Orrin G. Hatch Music Modernization Act of 2018 (“MMA”), which now heads to President Trump for his signature.  The U.S. Senate renamed the bill in honor of retiring Republican Senator Orrin Hatch, the bill’s sponsor and also a fellow songwriter. The bill includes a previous version of the MMA passed by the U.S....

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01

Oct 2018

A Trademark within a Copyright: 9th Circuit Clarifies Trademark Rights in Expressive Works

By: John Montgomery and James Carlson Courts typically use a test set forth in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) (“Rogers”), to determine whether artistic expression under the First Amendment of the U.S. Constitution overrides application of traditional trademark rights. If use of the trademark in the work does not add expressive value to the work that is protectable by the First amendment,...

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01

Oct 2018

Powerful Technique Promises to Revolutionize Biotechnology

By: David Forman A powerful technique promises to revolutionize biotechnology.  With the clumsy name of CRISPR-Cas9, this method enables rapid and convenient editing of genes with potential applications for medicine, agriculture, and other technologies.  The Federal Circuit recently resolved a dispute over patent rights to this gene-editing method.[1]  The competing parties were a group in Boston (The Broad Institute, MIT, and Harvard) (“Broad”) and the...

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10

Sep 2018

Jonathan Osha and Jeffrey Bergman Once Again Named Texas Super Lawyers

Osha Liang is pleased to announce that two attorneys at the firm have been selected as 2018 Thomson Reuters Texas Super Lawyers©. The firm’s honorees are Managing Partner Jonathan P. Osha and Partner Jeffrey S. Bergman. Both were recognized in the Intellectual Property and Intellectual Property Litigation categories. This is the 13th consecutive year that Mr. Osha and the 3rd consecutive year that Mr. Bergman have earned...

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31

Aug 2018

Patent Subject Matter Eligibility Six Months after Berkheimer v. HP Inc.

By: James Carlson In February 2018, the U.S. Court of Appeals for the Federal Circuit issued an opinion in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (hereinafter “Berkheimer decision”).  The Berkheimer decision may prove to be the most important U.S. court case regarding patent subject matter eligibility since the Supreme Court’s opinion in Alice Corp. v. CLS Bank Int’l., 134 S.Ct. 2347...

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31

Aug 2018

2018 Annual Statistics Report by the Japan Patent Office

By: Mutsumi Fukuoka On July 30, 2018, the Japan Patent Office (JPO) released its “2018 Annual Report” (in Japanese only). The 2018 Annual Report provides a comprehensive compilation of statistics on intellectual property (IP).  In this article, we will update our newsletter of July 2017 by highlighting some of the important features of patent statistics from the JPO Annual Report 2018. PCT International Applications Continue...

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31

Aug 2018

Simple Laws (Sometimes) Have Simple Meanings

By: Peter Schechter The Court of Appeals for the Federal Circuit (CAFC), sitting en banc, has decided that the statutory phrase “served with a complaint” – which appears in a time bar provision regarding Inter Partes Review (IPR) means, quite simply: served with a complaint.  The statute is not concerned with any effect, or lack of effect, of such service of a complaint.  Nor is...

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31

Aug 2018

If You Participate in Standards-Setting Orgs., Disclose Your IP Rights Early & Often, or Quit the Org.

By: Peter Schechter In 2011, Rambus was cleared of allegations of improper conduct in connection with its participation in standards-setting organizations (SSO).  There, Rambus owned patent applications relating to proposed technical standards under consideration, but there was not clear and convincing evidence that any claims of any pending applications were necessarily infringed by the proposed standards.  Rambus withdrew from the SSO and then, after it...

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16

Aug 2018

Jonathan Osha Receives Best Lawyers in America 2019 Recognition

Managing Partner Jonathan Osha was recently selected by his peers for inclusion in The Best Lawyers in America© 2019 in the fields of Litigation: Patent and Patent Law.  He has been recognized in the field of Litigation: Patent since 2018 and in Patent Law since 2014. ABOUT BEST LAWYERS Since it was first published in 1983, Best Lawyers® has become universally regarded as the definitive guide to legal...

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01

Aug 2018

The First Case in China Using Blockchain Technology to Preserve Electronic Evidence

By: Han-Mei Tso and Jude Yi On June 28, 2018, the Hangzhou Internet Court of China (the “Court”) made a public judgment regarding a dispute over infringement of the right to disseminate work on the Internet.  In this judgment, the Court accepted the use of electronic data as evidence preserved by blockchain technology in a legal dispute while also specifying a method and process for...

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01

Aug 2018

WTO Stomps Out Challenges to Australia’s Tobacco Plain Packaging Laws

By: Califf Cooper The World Trade Organization (WTO) awarded Australia a big victory over the challenges to its plain packaging laws for tobacco products by a handful of tobacco producing countries.  After a seven year fight, the WTO rejected the arguments that plain packaging laws infringed on trademarks and intellectual property rights. In December 2011, the Australian government proposed the Tobacco Plain Packaging Act that...

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01

Aug 2018

Update #2 on Tribal Sovereignty at the PTAB

By: Suzanne Lecocke The U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed the Patent Trial & Appeal Board’s (PTAB’s) denial of Allergan’s motion to terminate an inter partes proceeding (“IPR”) on the basis of tribal sovereign immunity.[1]   Allergan’s “trick”[2] of using sovereign immunity to cut off invalidity challenges has not worked at the district level, at the PTAB, or at the Federal...

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01

Aug 2018

Inherent Disclosures in Prior Art in the United States

By: Emily Marie Boggs A patent claim may be rejected under 35 USC § 102 as being anticipated by a prior art reference if each and every element of the claim is disclosed by the prior art reference, either expressly or inherently.  According to the inherency doctrine, a prior art reference inherently discloses a claim limitation when “the limitation at issue necessarily must be present,...

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01

Aug 2018

Incorporated by Reference, But to What Extent?

By: Ko Nakamura Incorporation by reference is a useful mechanism by which an application can incorporate disclosure from other documents as if the disclosure was explicitly contained therein without having to repeat the disclosure in the application.  “To incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the...

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02

Jul 2018

PCT Working Group in Geneva on June 19

In his role as Deputy Reporter General of AIPPI, partner Jonathan Osha addressed the PCT Working Group at WIPO in Geneva on the issue of incomplete and erroneously filed parts of applications on June 19, 2018. Pictures from the event:



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