Summer 2023

NYIPLA The Report

NYIPLA President's Corner

By: Robert Rando 
We meet here again. Time has swiftly moved on through a large part of my term as President. Much has occurred, much has been accomplished, and there is more that will be done. I am pleased to report that the NYIPLA is thriving with many programs, events, and new initiatives. Read More>>

To Fintiv and Beyond: Review Of Discretionary Denials at The PTAB
By: Robert Rosasco, Getz Balich LLC 
The USPTO and its Patent Trial and Appeal Board (PTAB) have been in its modern form for a little over a decade. At times, the PTAB has exercised its discretion and denied to institute post- grant review proceedings. At times, the percentage of discretionary denials has been significant, exceeding 40% of all petitions filed in FY2020.1 Read More>>

Uniloc USA, Inc., v Motorola Mobility LLC – Collateral Estoppel in Standing’s Clothing, or, Be Careful How You Settle
By: Brian S.S. Auerbach, Ballard Spahr LLP
On first glance, the Federal Circuit’s November 4, 2022 opinion in Uniloc USA, Inc., v Motorola Mobility LLC, 52 F.4th 1340 reads as a cautionary tale against loose licensing. The plaintiffs, Uniloc USA, Inc. and Uniloc Luxembourg, S.A., sued Motorola Mobility on November 15, 2017 in the District of Delaware for infringement of United States Patent 6,161,134. Motorola moved to dismiss, arguing that Uniloc’s prior patent license with Fortress Credit Co. LLC, which included unfettered rights to sublicense, eliminated Uniloc’s standing to sue because it no longer had the “exclusionary rights” necessary to confer standing to sue. The district court agreed, and dismissed the case on December 6, 2020. Read More>>
Jazz v. Avadel
By: Amy Lydon and Peter Nelson of DLA Piper LLP
Jazz Pharmas, Inc. v. Avadel CNS Pharmas, LLC, 60 F.4th 1373 (Fed. Cir. 2023) was not a typical patent infringement case. Jazz Pharmaceuticals, Inc. sued Avadel CNS Pharmaceuticals, LLC for infringing a patent it listed in the Approved Drug Products with Therapeutic Equivalence Evaluations publication (“Orange Book”) and Avadel counterclaimed seeking the removal of Jazz’s patent from the Orange Book. Both the district court and the Federal Circuit held that the patent in suit claimed a system and, thus, could not be listed in the Orange Book as a “method of use.” Read More>>
Pros and Cons of Integrating AI Tools such as ChatGPT in Patent Writing
By: T.C. Clare, Ice Miller LLP
Common responses to the ethical issues raised by the use of AI in patent law reveal a need to set evaluators on a better footing in the contexts of the histories of ethics, computing, and our understanding of intelligence. This paper seeks to quickly identify the key points to keep in mind when assessing AI products, news items, and advertisements regarding the promise and perils of generative AI in the legal profession, and patent law in particular. 
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56 F.4th 1363 (Fed. Cir. 2023)
By: Thomas J. Germinario 
This decision of the Federal Circuit was rendered on an appeal by Google from a PTAB ruling affirming the Examiner’s Final Rejection of the claims of Application No. 14/628,093 (the ‘093 Application) pursuant to 35 U.S.C. §103. The PTAB ruling was vacated and remanded for further proceedings. Read More>>
In re Cellect: Obviousness-Type Double Patenting and Patent Term Adjustment
By: Abigail Struthers, Arnold & Porter LLP 
On June 9, 2023, the Federal Circuit heard oral arguments in the case of In re Cellect, LLC.1 The issues on appeal are, in relevant part:
1. Whether patent term adjustments should be treated in the same way as patent term extensions for purposes of non-statutory obviousness-type double patenting; and
2. Whether a patent can become a basis for double patenting against another related patent, when the only reason that the two related patents expire at different times was due to a statutorily granted patent term adjustment.2 
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Copyright Is Not Keeping Up with Technology: How AI-Generative Works Are Challenging the U.S. System
By: Omid Michael Shamim, Albany Law School
Image a line.[1] When defined as a noun, a line is simply “a mark or stroke long in proportion to its breadth, made with a pen, pencil, tool, etc., on a surface.”[2] How each individual perceives this line constitutes an “idea.”[3] How we present this line for others to see constitutes “expression.”[4] This expression is theoretically protected by copyright.[5] Read More>>
Notable Trademark Decisions, November 2023
By: Scott Greenberg and Vrudhi Raimugia
Federal Circuit Holds That Fraud In An Affidavit of Incontestability Does Not Warrant Cancellation Of A Trademark Registration Under Section 14 Of The Lanham Act. Read More>>

"As Time Goes By - Re-visiting a Bygone Era"
By: Dale Carlson
A recent email exchange with Past President Tom Creel [1995-96] spurred me into thinking about social activities the NYIPLA provided to its members several decades ago. Read More>>

NYIPLA Spotlight

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Welcome New Members!
and Moving Up & Moving On
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NYIPLA Publication Committee Editorial Team
Committee Co-Chairs Giselle Ayala Mateus and Brian Doyle
Board Liaison Patrice Jean
Committee Members Dale Carlson, Robert Greenfeld, Margaret Welsh

The Report Archives

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Summer 2021

NYIPLA The Report

NYIPLA President's Corner

By: Robert Isackson 
As I write this, we remain in the scourge of the COVID-19 pandemic, although this morning’s news optimistically suggested that the debate should soon turn to “determining how will we define when the pandemic is over?”  Even after eighteen months of living in a remote/virtual world, NYIPLA will not let the pandemic get in our way and will actively produce events and programs for our respective association members and contacts. Read more>>

“Cleveland Indians” to “Cleveland Guardians” - for better or for worse 
By: Vrudhi  Rajesh  Raimugia  and  Steven W . Schlesinger
After the National Football League’s (“NFL”) Washington Redskins announced their decision to change their name, the Cleveland Indians Baseball Company LLC (“Cleveland Indians”) took a similar route by changing the name of their baseball team from the “Cleveland Indians” to the “Cleveland Guardians” on July 23, 2021.[1]  Read more>>

End of an Era of “No Consequences” for “Made in USA” Fraudsters, as New FTC Labelling Rule Comes into Effect
By: Pallavi Mathur  and  Suzanne M.  Hengl
In a win for consumers and small businesses, a new labelling rule enables the Federal Trade Commission (“FTC”) to seek – for the first time – civil penalties for false, unqualified claims on labels stating that a product originated in the United States.[1] Read more>>

Notable Trademark Decisions, September 2021
By: Scott Greenberg and Anna Antonova 
In 2005, William Shen applied for a US trademark registration for the mark FUJIIRYOKI in connection with massage chairs. The registration issued in 2007, and soon after issuance Shen assigned the registration to American Crocodile International Group, Inc. (“ACIGI”), a US company of which Shen was CEO.  Read more>>

"As Time Goes By - Reel or Real? - Redux 
By: Dale Carlson
Let's begin with a pre-pandemic view about distance learning.  Back in 2012, Harvard and M.I.T. announced that they were teaming up to offer "free" online courses through a partnership known as edX, making no-credit online classes available to many thousands of students from around the globe who might not otherwise have access to this educational opportunity.(1) Read more>>

Q&A with New Board Member –David Goldberg