The Potential End to Chevron Deference – An Avenue for Changing the USPTO’s Broadest Claim Interpretation Standard

By: Katherine Escalante*| Staff Writer

*Data current as of: 5/31/2016

Many questions are looming with the recent passing of the bill in the United States House of Representatives (“House”) aimed at ending agencies’ judicial deference in promulgating rules.  The Regulatory Accountability Act was passed by the House on January 11, 2017.  If passed by the Senate, the bill would legislatively repeal the Chevron deference doctrine that gives deference to federal agencies interpretations when evaluating federal rules and regulations.  A principle that has been the foundation of judicial review of statutory interpretation by administrative proceedings since 1984.  The name comes from a Supreme Court case, Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., in which the Court held that deference would be given to agency interpretations, unless the interpretation was found unreasonable.  Continue reading »

Finders Keepers: Not The Case In Design Patent Suits

By: Hunt Harris*| Staff Writer,0.5,0,0&iccEmbed=0&layer=comp&.v=RZ0lL2

Back in December of 2015, Samsung agreed to pay Apple $548 million in damages stemming from a 2011 lawsuit filed by Apple.  In the lawsuit, Apple argued that Samsung infringed on three design patents that represent the essence of the iPhone.  Design patents are meant to protect items whose design is central to the product.  As part of the deal, Samsung and Apple agreed to withdraw all patent lawsuits outside of the United States. Samsung also reserved the right to reclaim the funds if the verdict is subsequently overturned.  In March of this year, the Supreme Court agreed to hear an appeal from Samsung over the appropriate amount of damages to be paid to Apple. Continue reading »

‘Never Say Never’: Bieber and Usher Dragged Back into Copyright Battle

By: Valerie Mock* | Summer Guest Writer

In April of 2010, Justin Bieber released “Somebody to Love,” an upbeat urban pop song that peaked at number 15 on the Billboard Hot 100 and earned a Platinum certification from the Recording Industry Association of America (RIAA).  The track received positive critical reception from industry standards like Rolling Stone, and was so popular that Bieber eventually re-recorded the song with his superstar mentor, Usher, for distribution both as a remix and as part of Usher’s 2010 EP “Versus.”

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Author=[ Loren Wohl] |Date=2010-12-13 |Permission= |other_versions= }}

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Another Battle in the Patent War of Apple and Samsung

By: Tyler S. Hood* | Staff Writer

On September 17, the federal circuit decided Apple, Inc. v. Samsung Electronics Co., Ltd., the latest patent case decision in a protracted series of smartphone patent infringement battles between the two electronics giants.  The case concerned Samsung’s alleged infringement on a few Apple smartphone patents, perhaps most notably the patent for the swipe-to-unlock feature. The District Court had ruled that Samsung had infringed on the Apple patents in question, but the court denied to issue a permanent injunction on the grounds that Apple  failed to demonstrate that the infringement resulted in irreparable harm.

Transferred from Flickr by User:Fæ

Transferred from Flickr by User:Fæ

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The Evolving Standard of Antitrust Analysis in Pharmaceutical Product Hopping

By: John S. Sears* | Summer Guest Writer

Photo provided by

Is it “pharmaceutical innovation” or “product hopping”?  The distinction is not always clear.  While pharmaceutical innovation brings new and improved pharmaceuticals to patients, the term “product hopping” refers to a tactic by which brand name pharmaceutical companies try to obstruct generic competition by making modest reformulations that offer little or no therapeutic advantages.  Such approaches are contrary to section 2 of the Sherman Act that makes it an offense to “monopolize, or attempt to monopolize … any part of the trade or commerce among the several States.” Continue reading »

Patent Reform in the 114th Congress

By: John S. Sears* | Summer Guest Writer

1868 Typewriter Patent

1868 Typewriter Patent

Despite recent years having witnessed the most extensive overhaul of U.S. patent law since the U.S.  Patent Act of 1952, it is clear more reform of U.S. patent law is on the horizon.  I recently had the privilege of leading a panel discussion on patent reform legislation at a meeting of university technology transfer professionals. Some proposals in the 114th Congress could have significant impacts on university tech-transfer practice, but for now I want to give a more general summary of the bills making their way through Congress

There are three bills in the 114th Congress considered “comprehensive” patent reform legislations, including major revisions such as to how we handle post-grant review proceedings, pleading requirements, demand letter practice, discovery, and willful infringement.  These include the Innovation Act (HR.9) and the corresponding Protecting American Talent and Entrepreneurship (PATENT) Act of 2015 (S1137), and the Support Technology and Research for Our Nation’s Growth (STRONG) Patents Act of 2015 (S.632).

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Biggest Loser Host Hopes To Win Big In Court

By: Hunt Harris* | Summer Guest Writer

Jillian Michaels, the popular celebrity trainer and former host of “The Biggest Loser,” has filed a $10 million lawsuit against Lionsgate over YouTube videos posted to its channel.  Michaels, who recently quit the show for the third time in June 2014, claims Lionsgate has not compensated her for her workout videos that are used on the company’s YouTube channel.  The complaint states that “despite receiving millions of dollars in revenue from YouTube, and half of all views on the YouTube BeFit channel relate to Ms. Michaels’ Lionsgate (videos), Ms. Michaels has not received any compensation whatsoever.”  Lionsgate’s BeFit, which launched in 2012, has generated more than 200 million views to date and has more than 1.5 million subscribers on YouTube. According to Michaels, Lionsgate “did not consult her before they used her image and brand on the channel, and exceeded the number of videos posted to YouTube allowable under her contract.”

JM_11_016-RGB Continue reading »

Caught in the Web: SCOTUS’ Recent Decision Regarding Patent Royalties

By: Amanda Whorton* | Summer Guest Writer

Sketch by Art Lien

Sketch by Art Lien

Your friendly neighborhood U.S. Supreme Court laid down a crucial decision involving patent royalties and a Spiderman themed toy that has everyone’s spidey senses tingling.

Kimble v. Marvel Entertainment involves a toy Stephen Kimble invented and patented called the “Web Blaster,” which consists of a glove with a valve and canister of pressurized foam, allowing kids to pretend that they are their favorite web-slinging superhero by having string shoot from the palm of their hands.  Kimble had previously sued Marvel for marketing a similar toy and their settlement included an agreement that licensed the patent to Marvel in return for royalty payments from its sale.  However, the agreement set no end date for these payments.  Neither side was aware at the time that a 1964 Supreme Court case, Brulotte v. Thys, made agreements for royalty payments after the expiration of a patent per se unlawful.  Kimble urged the Court to overturn this decision, while Marvel argued that Brulotte prevented them from having to pay royalties after the patent expired in 2010.  Marvel already paid Kimble $6 million for use of his patent. Continue reading »

Digital Life After Death

By: Alec Roberson* | Staff Writer

In an age of social media and instant communication via emails, most people may not consider what will happen to their online accounts after death. Currently, there are roughly 30 million Facebook accounts still active that belong to people who are deceased. Likewise, it is estimated the about 1.5 million Facebook users and close to the same amount of Twitter users die each year. The question that lingers is what actually happens to these digital assets when you die and how can you transfer them properly to preserve your digital legacy?

The reason this is such an interesting question is because each state has their own set of laws governing the transfer of these types of assets and each email/social media provider likewise has their own set of proscribed rules governing access on death. This issue came to a head in 2005 when John Ellsworth wanted access to his deceased son, Justin Ellsworth’s, Yahoo! email account in order to recover emails and photos sent and received during his son’s military duty in Iraq. Yahoo!’s terms state that a user’s email account and all of its contents terminate at death with no right of survivorship or right of transferability. John was able to receive his son’s email contents only after a probate court in Michigan made the order.

Different providers have different terms though. Google allows you to designate who can access your account (including Google Plus, Gmail, etc.) or whether you want your data deleted after three, six, or twelve months after death. Facebook does not give access to anyone but allows family members to contact Facebook so that the deceased’s account can be memorialized, meaning no one can login, add or delete friends, and that person will not be suggested to other people to add as a friend nor will their birthday show up as a notification to others. Twitter allows the deceased’s family to request for the account to be deactivated as long as they can show a death certificate and details that show the account belongs to the deceased. In theory, any family member or friend that has the ability to get or knowledge of the deceased’s passwords could log on to those accounts themselves; however, under the federal Computer Fraud and Abuse Act this may violate federal law and the Stored Communications Act may prevent someone from sharing the deceased’s information available on these digital assets. Continue reading »

Self-Defense: Expediting the Patenting Process to Meet Emergency Demand

By: Austin J. Griffin* | Staff Writer 

“Radam’s Microbe Killer” Patent Medicine Advertisement

“Radam’s Microbe Killer” Patent Medicine Advertisement

The modern world faces many varied threats that require quick action.  Not the least of these are diseases like Ebola.  However, despite its media coverage and known mortality rates, many of the largest medical R&D groups have failed to act on Ebola until now.  A recent article in USA Today stated that although the threat of Ebola has been known since 1976, the monetary gain from the development of a cure has been so little that major drugmakers have ignored it.  Now that the threat is growing, several new treatments, from antiviral drugs to blood transfusion therapies, are being tested and readied for market.  However, they are not ready yet.

Why are these treatments not available?  One reason may be the lack of economic protection of the drugmaker’s final product through a patent.  The United States patent system, although useful in its protections of intellectual property, is notoriously slow.  In the face of anything other than a “sure deal”, a pharmaceutical company may be tentative to produce and subsequently patent an otherwise unneeded treatment.

So, how can a company expedite its protection so that new treatments for new illnesses can become economically available?  This article will use a broad hypothetical to follow a few options for such a process and find whether such a patent process may actually be effective in helping secure a company’s specific treatment. Continue reading »