IP Litigation Attorney

Robert J. Sayfie has represented clients successfully against, what are perceived to be, "large and successful" corporations.  Read the below links to see what independent parties have reported about the success of Robert J. Sayfie against opponents such as Intel, Inc., etc..

Robert J. Sayfie, (www.sayfie.com) represents a patentee against an accused infringer in Nevada:

http://www.rfcexpress.com/lawsuits/patent-lawsuits/nevada-district-court/52074/ropes-courses-inc-v-whitewater-west-industries-ltd-dba-prime-play/summary/

Robert J. Sayfie, (www.sayfie.com) sues Intel Corporation:  

http://www.boliven.com/legal_proceeding/1:05-cv-00404-ESC?q=

Robert J. Sayfie has represented clients successfully against, what are perceived to be, "large and successful" corporations.  Read the below links to see what independent parties have reported about the success of Robert J. Sayfie against opponents such as Intel, Inc., etc..

Robert J. Sayfie, (www.sayfie.com) represents a patentee against an accused infringer in Nevada:

http://www.rfcexpress.com/lawsuits/patent-lawsuits/nevada-district-court/52074/ropes-courses-inc-v-whitewater-west-industries-ltd-dba-prime-play/summary/

Robert J. Sayfie, (www.sayfie.com) sues Intel Corporation:  

http://www.boliven.com/legal_proceeding/1:05-cv-00404-ESC?q=

http://www.rfcexpress.com/lawsuits/patent-lawsuits/nevada-district-court/52074/ropes-courses-inc-v-whitewater-west-industries-ltd-dba-prime-play/summary/

 

 

 

 

http://www.boliven.com/legal_proceeding/1:05-cv-00404-ESC?q=

NEW PILOT PROGRAM - AFTER FINAL CONSIDERATION

On  May 19, 2013, the USPTO launched the After Final Consideration Pilot 2.0 (AFCP 2.0).  Using information obtained from the After Final Consideration Pilot (AFCP), which began on March 25, 2012 and ended May 18, 2013, the USPTO continues their on-going efforts toward compact prosecution.  The USPTO also continues to increase collaboration efforts between examiners and stakeholders. 

One of the goals of the policy of “compact” prosecution is to provide applicants with prompt and complete examination of their applications.  AFCP gives extra time for examiners to search and/or consider responses after final rejection.  If a response does not place the application in condition for allowance, the idea is the applicant will benefit from the extra time to schedule and conduct interviews to discuss results of searches and/or considerations.  Like AFCP, AFCP 2.0 also revised procedure for obtaining consideration and focuses the pilot on review of proposed claim amendments. 

AFCP 2.0 is scheduled to run through September 30, 2013, i.e., any request to consider a response after final rejection under AFCP 2.0 must be filed on or before September 30, 2013.

A response under 37 CFR §1.116  is required to become eligible for consideration under AFCP 2.0.  This includes a request for consideration under the pilot (Form PTO/SB/434) and an amendment to at least one (1) independent claim that does not expand the scope of the independent claim in any way. 

You can find the Notice published in the Federal Register at 78 Fed. Reg. 29117.  Examiners will use their judgment to determine if the response can be fully considered under AFCP 2.0. 

If you received a final rejection under 37 CFR 1.116 and you believe further searching and/or consideration by the examiner will lead to allowance of your application then you may want to make a request for consideration under AFCP 2.0.   

For information on how to request consideration under AFCP 2.0, please contact Robert J. Sayfie by visiting www.sayfie.com or calling toll free at 888-468-0444.

Domain Name Disputes and Cybersquatting

 

            According to the Anticybersquatting Consumer Protection Act Cybersquatting is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else.  The person registering, trafficking, or using the domain name in bad faith is called a cybersquatter.  Typically, the cybersquatter then offers to sell the domain to the person or company who owns a trademark.

            In a recent case, the jewelry company Swarovski filed a complaint against a Mr. Derk Hond.  The case is, LLSwarovskiAktiengesellschaft v. Derk Hond Case No. D2013-0005.  The respondent, sometimes called a defendant, registered the domain name cheap-swarovski.net.

FACTS

            The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 3, 2013.  Swarovski uses the SWAROVSKI trademarks in connection with crystal jewelry stones and crystalline semi-finished goods for the fashion, jewelry, home accessories, collectibles, and lighting industries

LAW

In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) The Respondent has no rights or legitimate interests with respect to the disputed domain name; and

                        (iii) The disputed domain name has been registered and is being used in bad faith.

CONCLUSION

            The Panel orders that the disputed domain name be transferred to the Complainant.

Visit www.sayfiepatents.com

WHAT IS A PATENT TERM ADJUSTMENT?

The patentability of inventions is defined under Title 35 of the U.S. Code.   During the 1990’s Congress enacted the Uruguay Round Agreement Act and the American Inventors Protection Act (AIPA). 

In 1994, the Uruguay Round Agreement Act resulted in a patent term adjustment from 17 years to 20 years from the date a patent application is filed.  It also established Patent Term Adjustment (PTA).  The PTA was significantly amended with the enactment of the AIPA in 1999 and provided for a Request for Continued Examination (RCE).  These significant law changes led to litigation pertaining to the plain language of Title 35. 

The U.S. District Court for the Eastern District of Virginia has found in a recent case that the United States Patent and Trademark Office’s (USPTO) interpretation and application of the “RCE carve-out” provision of the PTA statue is contrary to law.  See Exelixis, Inc. v. Kappos, No. 1:12cv96 (E. D. Va. Nov. 1, 2012).

There is good chance that the USPTO will appeal the Exelisis decision, however, this holding prompts consideration for patentees owning patents issued within the past 180 days or applicants considering whether to file an RCE.

An unresolved question concerning the AIPA’s PTA provision is as follows:

            Whether 35 § 154(b)(1)(B) requires that an applicant’s PTA be reduced by the time attributable to an RCE, where, as here (Exelixis), the RCE is filed after the expiration of AIPA’s guaranteed three year period. 

The plain language of Section 154 fails to address and does not require that an applicant’s PTA be reduced by the time required to process an RCE that is filed after the expiration of the three year period. 

Per Exelixis, it is recommended that patent owners and applicants consider these tips:

(1) For any patents issued within the past 180 days, patent owners should evaluate those patents to determine if the underlying application involved an RCE filed after the three-year time period in order to determine whether they should seek a PTA; and

(2) Patent applicants should, if possible, wait to file an RCE until three years after the application filing date. An RCE filed before the three-year time period will preclude the applicant from obtaining additional PTA.

For further answers to patent law questions and your PTA , please contact The Patent Law Office of Robert J.Sayfie.

 

Visit www.sayfiepatents.com

 

Or call 1-888-468-0444

In Re Mouttet - a June 2012 case discussing obviousness

     After a non-provisional patent application is filed with the United States Patent and Trademark Office(USPTO), an examiner at the USPTO conducts a search, and in over 80% of the filed applications, sends an office action rejecting the application.

     The most typical rejection is due to “obviousness” under 35 U.S.C. 103.  Such an office action usually requires the applicant filing a response and amendment to overcome this type of rejection. 

     Under 35 U.S.C. 103(a), if a claimed invention, as a whole, would have been obvious to a person of ordinary skill in the field of the invention, the claims are rejected. Whether an invention would have been obvious to one of ordinary skill in the art is a legal determination based on underlying findings of fact. KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398, 427 (2007); In re Gartside, 203 F.3d 1305, 1316, 319 (Fed. Cir. 2000) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966)).

      The scope and content of the prior art, as well as whether the prior art teaches away from the claimed invention, are determinations of fact. See Para-Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d 1085, 1088 (Fed. Cir. 1995). Furthermore, where “a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR, 550 U.S. at 416.

      Furthermore, a patent application may be rejected if it would have been obvious for one of ordinary skill in the field of the invention to take one invention and combine the elements of other patented inventions to yield predictable results.

     An inventor can rebut an obviousness rejection by showing that the prior art “teaches away” from the claimed invention. DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326-27 (Fed. Cir. 2009). Based on facts, prior art “may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). However, the “mere disclosure of alternative designs does not teach away.” In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).

      The Court of Appeals for the Federal Circuit recently decided In re Mouttet, 2011-1451, 2012 WL 2384056 (Fed. Cir. June 26, 2012). The decision affirmed a rejection by the Board of Patent and Interferences (“Board”) for all 20 claims in inventor Mouttet’s utility patent application No. 11/395,232, “Crossbar Arithmetic Processor.” Id. at 2. The application “discloses a computing device for processes such as addition, subtraction, multiplication, and division using nanoscale materials in a crossbar array.” Id. The Board upheld the original PTO Examiner’s rejection of the application under 35 U.S.C. 103(a) as unpatentable over five prior art patents. Basically, one patent contained all but three components of the claims provided in Mouttet’s application. Further combining the elements of the other prior art patents yielded the same results as Mouttet’s claimed invention—rendering it obvious. Id. at 5-6.

      The Board found that an ordinarily skilled artisan—in this case an electrical engineer—would have easily been able to substitute in the elements from one prior art patent with another to predict the claims included in Mouttet’s application. Id. at 10. “[T]he Board noted that there is no requirement that the examiner show how to physically incorporate [such substitutions] because obviousness focuses on what the combined teachings would have suggested. Id. at 11. Mouttet’s arguments on appeal were that (1) combing the elements of the prior art patents would have destroyed the principal of operation of the prior art; and (2) the prior art teaches away from the presently claimed invention. Id. at 13.

      The main prior art patent that rendered Mouttet’s claimed invention obvious utilized optical paths rather than the electrical paths included in Mouttet’s claims. Mouttet argued that substituting optical paths for electrical paths would have destroyed the principal operation of the prior art invention. Id. at 14. The Board disagreed, finding “that the principle of operation of [the] computing device is its high level ability to receive inputs into a programmable crossbar array and processing the output to obtain an arithmetic result.” Id.  The principal of operation can be accomplished via optical or electrical paths, and an ordinarily skilled electrical engineer would understand this.

     As for Mouttet’s argument that the prior art “teaches away” from the claimed invention, the board was not persuaded with this argument.  Whether prior art teaches away from a claimed invention is a question of fact. In re Napier, 55 F.3d 610, 613 (Fed.Cir.1995). Here, the prior art specifically discussed the differences in optical and electrical paths, noting that an optical path is the preferential embodiment. Discussing an inferior or non-preferential method does not “teach away” because “the mere disclosure of an alternative design does not teach away.” Id. at 17. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).

     If an application does get rejected under 35 U.S.C. 103, the applicant may present arguments based on facts, and references should be included when making an argument that prior art teaches away from the claimed invention, or that the principal element of the invention would have been destroyed.

Visit www.sayfiepatents.com