PTAB Finds New State Immunity

By Stephen L. Grant, Senior Attorney, Standley Law Group LLP

Using one of the least-understood amendments to the United States Constitution, the Patent Trial and Appeal Board (PTAB) recently found a new immunity for States and their instrumentalities. It is the latest resurrection of a doctrine I have been involved with over most of my career as a lawyer.

Many, including the non-lawyers, will be familiar with the first ten amendments to the Constitution, the so-called “Bill of Rights” that put the Constitution into an acceptable condition to the thirteen erstwhile States. The Eleventh Amendment was introduced about four years after the passage of the Constitution, to overrule the US Supreme Court’s holding in Chisholm v Georgia, 2 US 419 (1793), which held that federal courts have diversity jurisdiction over a suit against a state by a private citizen of another state. It was ratified by the States and became law within four years. Through a series of subsequent cases, including Hans v Louisiana, 134 US 1 (1890), Ex parte Young, 209 US 123 (1908) and Alden v Maine, 527 US 706 (1999), the doctrine has developed further judicially-created aspects. As a result, its scope goes far beyond its original language and it is unfamiliar to many lawyers, much less lay persons.

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Copyright Risks for the Unsuspecting – Use of Web-based Photos Can Cost You Money

By F. Michael Speed, Jr., Ph.D, Partner, Standley Law Group LLP

Your fledgling startup is growing and you bring on your first marketing manager; a go getter with all the computer skills needed to get your brand out over social media and the internet. Within days, you have a new website, a new Facebook page along with Twitter and Instagram accounts that are actively followed. Your webpage is adorned with photos of seascapes and waterfalls that match your branding goals and green friendly image. Your leads are increasing and sales are starting to pick up.

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Who is Considered the Inventor of an Invention and Who is the Owner?

By James L. Kwak, Partner, Standley Law Group LLP

The inventor of an invention is the person or persons who intellectually contributed to the conception of the claimed invention. Those persons who merely helped assemble the invention (such as work done on a prototype), but did not conceive any portion of it, are not considered inventors. Those people are merely persons who helped reduce the invention to practice.

For example, let’s assume that Bob invented a new design for a gas grill. Bob makes sketches of his idea and prepares a written description. Bob takes his drawings to a grill manufacturer who takes his drawings and builds him a prototype. In this situation, Bob is the only inventor and the manufacturer is merely the outfit who helped Bob reduce his invention to practice.

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Virtual Patent Marking

By Jeffrey C. Norris, Partner, Standley Law Group LLP

Patent owners are required to provide notice to an infringer under 35 U.S.C. § 287 in order to be able to collect damages for infringement. Failure to provide proper notice of the patent rights can prevent the recovery of damages, which could be costly. Damages are only available to compensate for infringement that occurs after effective notice has been given to the infringer.

Effective notice to an infringer may be either actual or constructive. Actual notice consists of directly contacting the infringer to provide notice of the infringement. While actual notice is effective, there is necessarily a period of infringement prior to the notice for which damages may not be recovered. Constructive notice may eliminate that lag time by automatically providing notice to the public that an article is patented. According to case law, the constructive notice must be “substantially consistent and continuous” in order to ensure that the public is adequately informed of the patent rights. When there is effective constructive notice prior to the infringement, damages will be available once the infringement takes place.

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Exhausted yet? If not, you may be soon

By Melissa A. McCurdy, Senior Associate, Standley Law Group LLP

Supreme Court Set to Decide Important Questions on the Scope of Patent Exhaustion in 2017

Impression Products, Inc. v. Lexmark International, Inc., is set for oral argument before the United States Supreme Court on March 21, 2017. The outcome of the case, which will address the scope of patent exhaustion, could have a serious impact on certain segments of business such as companies, like Impression Products, that refurbish used, patented products for resale (think phones, laptops, toner cartridges, etc.). It could also have an effect on the rights of consumers that purchase patented goods. The two specific questions pertaining to the doctrine of patent exhaustion that are going to be analyzed by the Court are: 1) whether a conditional sale that transfers title to a patented item, but which specifies post-sale restrictions on the item’s use or resale avoids application of the patent-exhaustion doctrine and therefore permits the enforcement of the post-sale restrictions; and 2) whether patent exhaustion will be triggered by a sale of the patented item (the sale being authorized by the patentee) when the sale occurs outside of the United States. The Federal Circuit has upheld post-sale restrictions on patented articles despite the doctrine of patent exhaustion and it has rejected the contention that patent exhaustion can be triggered by a foreign sale. We are about to find out whether the Supreme Court agrees with these applications of law.

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