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IPO Daily News™

Tuesday, 19 March 2019

19 March 2019

PTAB PROVIDES GUIDANCE ON PRESENTING LIVE TESTIMONY AT ORAL ARGUMENT

Yesterday the USPTO’s Patent Trial and Appeal Board designated as “precedential” two panel opinions concerning live testimony at oral argument. In DePuy Synthes Prods., Inc. v. Medidea, L.L.C., the panel denied the patent owner’s request to allow oral testimony by the inventor. Because he had not previously provided declaration evidence and was not listed as counsel of record, his testimony would be “new evidence” that is inadmissible at oral argument.

In contrast, the panel in K-40 Elecs., LLC v. Escort, Inc. granted the patent owner’s request to present the inventor’s live testimony at oral argument. PTAB “does not envision that live testimony will be necessary at many oral arguments” and will consider requests on a case-by-case basis. Factors that might be considered include the importance of the testimony and the Board’s need to assess the credibility of a fact witness. Here, the patent owner sought to rely on the inventor’s testimony to antedate the references asserted against the patent by the petitioner, so the testimony was likely to be case-dispositive.

IPO COMMENTS ON PROPOSED U.S. COUNSEL REQUIREMENT FOR FOREIGN TRADEMARK APPLICANTS AND REGISTRANTS

Yesterday Executive Director MARK LAUROESCH submitted IPO’s response to the USPTO’s request for comments on the “Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants.” The proposed rulemaking would require applicants, registrants, or parties to a proceeding whose domicile or principal place of business is not located within the U.S. or its territories to be represented by an attorney who is an active member in good standing of the bar of the highest court of a state in the U.S. IPO supports this rule as a measure to protect the integrity of the trademark register, and it provided comments in the letter concerning options being considered by the USPTO to implement such a rule. IPO’s U.S. Trademark Office Practice Committee (Chair: JENNY GREISMAN, IBM Corp.; Vice Chairs: LAURIEL DALIER, Sterne, Kessler, Goldstein & Fox, PLLC; and ALLISON STRICKLAND RICKETTS, Fross Zelnick Lehrman & Zissu, PC; Secretary: JULIA BELAGORUDSKY, Fross Zelnick Lehrman & Zissu, PC) assisted with preparing the comments.

MANAGE YOUR MEMBERSHIP BENEFITS

Are you using your IPO benefits to their fullest potential? Are you new to IPO? Would you like to get your staff more involved? Join us for a 30-minute IPO membership orientation call. Calls for corporate and small business members are held on the 3rd Tuesday of each month at 2:00p.m. ET. Calls for law firm members are held on the 4th Tuesday of each month at 2:00p.m. ET. Contact Lorna Soderberg for further information or to participate.

IP IN THE MASS MEDIA

Apple Infringed Qualcomm Patents; Jury Returns $31 Million Verdict

On Friday a federal jury found that Apple Inc. owed Qualcomm $31 million for infringing its patents on chip technology that allows mobile devices to connect to networks quickly and extends battery power. (Associated Press)

Maker of Dum-Dums Wins Temporary Injunction in Trademark Suit against Tootsie Roll

Last week the Chicago Tribune reported that a federal judge in Ohio granted a temporary injunction requiring Tootsie Roll Industries to change the packaging used for its Charms Mini Pops during the pendency of a trademark infringement suit filed against it by Spangler Candy, which makes Dum-Dums lollipops.


Law & Advocacy

Friday, February 21, 2014

2014 USPTO BUDGET WILL ALLOW HIRING, SATELLITE OFFICES

During the quarterly meeting of the USPTO’s Patent Public Advisory Committee (PPAC), Chief Financial Officer TONY SCARDINO reported that the 2014 appropriations bill signed in January funds the USPTO at $3.024 billion – $90.8 million above the fiscal 2013 enacted level and $238.3 million above the fiscal 2013 sequestration level. The budget will allow the USPTO to hire 1,000 patent examiners and 63 administrative patent judges and provides funding related to opening satellite offices in San Jose, Denver, and Dallas. Projected 2014 spending is estimated at $2.948 billion. The White House will release its fiscal 2015 budget on March 4.


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