Spring 2024

NYIPLA The Report

NYIPLA President's Corner

By: Robert Rando 
Thank you for entrusting me with the opportunity to lead our incredible Association during this past year. As my term in office as President has come to an end, I am reflecting on the wonderful and productive year we have had. Together, we achieved many of the goals I set out for us during the past year - culminating in the very successful 102nd Annual Dinner in Honor of the Federal Judiciary. None of which could have been accomplished without the hard work, diligent efforts, and dedication of my fellow Officers, Board members, Committee Chairs, other NYIPLA members, and Feikje and her staff. Read More>>

“A Threat to the Public”? Non-Attorney Law Firm Ownership in Various Jurisdictions
By: Daniel Douglas, Weitzman Law Offices, LLC
On August 7, 2023, the New Jersey State Bar Association released a position paper affirming its longstanding opposition to the possibility of nonlawyers owning a law firm or maintaining a business partnership with a lawyer. Read More>>

Regents of the Univ. of Minnesota v. Gilead Sciences, Inc.: Indeterminacy in a Forest of Trees
By: Andrea M. Wilkovich, Hoffmann & Baron, LLP
This paper discusses the Opinion by Circuit Judge Lourie for the Court of Appeals for the Federal Circuit (“CAFC”) in the case of Regents of the Univ. of Minnesota v. Gilead Sciences, Inc., 61 F.4th 1350 (Fed. Cir. 2023) (“the Gilead case”). Circuit Judge Lourie, Circuit Judge Dyk, and Circuit Judge Stoll considered, inter alia, whether a finding by the U.S. Patent and Trademark Office Patent Trial and Appeal Board (“the Board”) that U.S. Patent No. 8,815,830 (“the ‘830 patent”) is not entitled to the filing dates of certain applications (referred to as “NP2-P1”) is supported by substantial evidence. Id. at 1353, 1356. Read More>>
Effects of Xerox v. Bytemark and Nested Bean Inc. v. Big Beings Pty Ltd
By: Brandon R. Theiss, Volpe Koenig
In Xerox Corp12. v. Bytemark, Inc, (hereinafter “Xerox”) Director Vidal affirmed the Patent Trial and Appeals Board’s (hereinafter “Board”) decision denying the institution of Xerox’s Inter Partes Review (hereinafter “IPR”) petition IPR2022-00624 in the Director’s sua sponte Director Review. This precedential decision illustrates the importance of providing more than conclusory statements by an expert in support of an IPR Petition. Read More>>
Abitron Austria GmbH v. Hetronic Int'l, Inc. - Extraterritoriality of U.S. Trademark Protection: How Far Does it Go?
By: Michelle P. Ciotola, Cantor Colburn LLP
In a 9-0 decision the Supreme Court of the United States vacated and remanded the decision of the United States Court of Appeals for the Tenth Circuit, holding that in applying the presumption against extraterritoriality, two provisions of the Lanham Act that prohibit trademark infringement are not extraterritorial and extend only to claims where the infringing use in commerce is domestic. Abitron Austria GmbH v. Hetronic Int'l, Inc., 600 U.S.__(2023). Read More>>
OpenSky Industries, LLC. V. VLSI Technology LLC– Fall-Out From Abusing The IPR Process
By: Robert J. Rando and Alexis E. Marin, Greenspoon Marder, LLP 
In the current patent landscape, there are questions regarding the authority and conduct of the Director, and by extension the Patent Trial and Appeals Board (“PTAB’’ or “Board”), pursuant to the Leahy-Smith America Invents Act (“AIA”). Chief among them is the lack of clarity as to how the Director handles abuse of process of post-grant review proceedings, in particular inter partes review. Read More>>
Developments in the U.S. Copyright Office and U.S. Patent and Trademark Office Related to Artificial Intelligence 
By: Robert E. Rudnick and James T. Corcoran, Gibbons P.C. 
Artificial Intelligence (AI) is rapidly emerging as the new disruptive technology which should have large implications across many different aspects of society. Newer AI models such as OpenAI’s ChatGPT and Dall-E, Google’s Bard, and Microsoft’s Bing, to name a few, are all able to perform tasks in seconds which would take humans hours to complete. Read More>>
The GDPR Meta Decision from the Irish Data Authority: Improper Transfers of Personal Data from Europe to the U.S.
By: Simon P. Walsh, Cadwalader, Wickersham & Taft London
In May of this year, Meta (formerly known as Facebook) was ordered to suspend its flows of data between the European Union (“EU”) and the U.S., and was issued with a record fine of Euro 1.2 billion (almost US$1.3 billion) by the Irish Data Protection Commission (“Irish DPC”) in respect of Meta transferring the data of individuals based in the EU to the United States in breach of EU privacy laws. Read More>>
In Re Monolithic Power Systems, Inc. – When Home for a Remote Worker can be a Residence
By: Lynda L. Calderone, Calderone Bullock LLC
On September 30, 2022, the Court of Appeals for the Federal Circuit (CAFC) denied, in a split panel, a petition for writ of mandamus filed by Monolithic Power Systems, Inc. (the defendant in an infringement litigation) to dismiss or transfer the litigation from the U.S. District Court for the Western District of Texas (W.D. Texas) to the District Court for the Northern District of California (N.D. California) based on the presence of remote workers in W.D. Texas. Read More>>
The Continuing Saga of Section 101 Patent Eligibility: Patent Law After Tropp and Interactive Wearables Cert. Denials
By: Keith McWha, Lerner David LLP
Abstract: Discussions of patent eligibly continue as courts, and practitioners struggle to understand and uniformly apply the Alice two step test previously articulated by the U.S. Supreme Court. The U.S. Supreme Court’s decision not to grant cert in Tropp and Interactive Wearables to identify further guidelines to clarify the Alice test further the struggle as even the USPTO has admitted that such clarification would be welcome. With advancing technologies, the ever expanding umbrella of covering inventions under the abstract idea exception continues to be an issue in both patent prosecution and patent litigation. This paper summarizes the decisions in Tropp and Interactive Wearables, and explores Section 101. Read More>>
CHROMADEX, INC., Trustees of Dartmouth College v. ELYSIUM HEALTH, INC.
By: Kathleen D. Rigaut, Howson & Howson, LLP
35 U.S.C. § 101 states:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement there of, may obtain a patent therefor, subject to the conditions and requirements of this title. 
Read More>>

As Time Goes By - Building Bridges
By: Dale Carlson
Kudos to President Rob Rando for his podcast series hosting remembrances of past presidents on their time in office.  The mission of our Association is all about building bridges with the bench and bar and with students having an interest in IP law. 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 Richard Kurz
Board Liaison Jenny Lee

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