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Heslin Rothenberg Farley & Mesiti, P.C. Intellectual Property
Law Bulletin Fall 2011 |
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CLIENT ALERT: "America Invents Act"
The United States Senate passed and President Barack Obama signed the "America Invents Act" September 16, 2011, at Thomas Jefferson High School for Science and Technology in Alexandria, Va. The Act is the first major overhaul of the United States Patent System in over 50 years and we believe that changes included in the Act may significantly impact your patent filing and enforcement strategy. We have summarized several of the critical amendments that are included in the Act.
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Louboutin vs. YSL:
Battle of the Red Sole Shoes
by Caroline B. Ahn
As fashionistas, celebrities and other shoe aficionados will attest, Christian Louboutin designs fabulous high end footwear. Besides the design, what makes Louboutin shoes stand out? The bright red outer soles.
Many of us have seen photos of celebrities and socialites donning high heels with the red soles and immediately recognize that they are wearing Louboutin shoes. Although Christian Louboutin has invested great deal of resources in creating and promoting his brand, including obtaining a trademark registration for a lacquered red sole for women's high fashion designer footwear, the validity and enforceability of the Red Sole trademark is in jeopardy due to a recent legal dispute with competitor Yves Saint Laurent.
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Methods Involving Only Mental Steps Found Unpatentable
by Blanche E. Schiller
In CyberSource Corporation v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011), the Court of Appeals for the Federal Circuit held that claims that recite purely mental steps are not patentable subject matter.
CyberSource Corporation is the owner of U.S. Patent No. 6,029,154 (the '154 patent), which describes the use of Internet address information (such as IP addresses, MAC address and e-mail addresses) to detect credit card fraud. CyberSource appealed to the Court of Appeals for the Federal Circuit from a lower court's decision granting summary judgment of invalidity of claims 2 and 3 of the '154 patent under 35 U.S.C. 101, for failure to recite patentable subject matter.
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HRFM Startup Group Represents Winner of New York Business Plan Competition
by Erica M. Hines
 | | Photo by: Mia Ertas/CNSE |
Congratulations go out to Helios Innovative Technologies Inc. of Syracuse, NY, Grand Prize Winner of the 2011 New York Business Plan Competition held on April 28, 2011 at the College of Nanoscale Science & Engineering in Albany.
The competition was hosted by The College of Nanoscale Science & Engineering (CNSE) at the University at Albany, UAlbany's School of Business, the Lally School of Management and Technology at Rensselaer, and Union Graduate College School of Management. In addition to winning the overall competition, Helios also placed first in the Healthcare Track, taking home a combined total of $60,000 in cash and in-kind services, including IP services from HRFM to develop and protect the company's IP portfolio.
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Solar Patents Shine in 2010 - Shine on Solar Edition of CEPGI
by Victor A. Cardona
The Shine On Solar edition of the CLEAN ENERGY PATENT GROWTH INDEX (CEPGI), published by the Cleantech Group at Heslin Rothenberg Farley & Mesiti P.C. provides an indication of the trend of innovative activity in the Solar energy sector. In 2010 Solar patents were second only to Fuel Cell patents in the Clean Energy area. Solar Photovoltaic patents spiked in 2010 to a record level of 339 (up 232 %) with third generation solar PV patents topping the other generations of PV technology. Applied Materials led the other Solar PV patent owners in 2010 over Sunpower and leaving behind overall PV leader Canon. Fu Zhun Precision Industry and Foxconn Technology Co., Ltd. led solar thermal patent owners. Solar thermal patents were granted to 23 other separate entities with only inventor Pitaya Yangpichit even receiving two and Walmart Stores being one of the 22 with one patent.
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Clean Energy Patent Growth Index:
2nd Quarter 2011 Results
by Victor A. Cardona
Clean Energy Patents continue strong showing in 2nd Quarter-
GE takes Crown from GM, California leads and NY surges
Second quarter results reveal the CLEAN ENERGY PATENT GROWTH INDEX (CEPGI) to have a value of 537 granted U.S. patents which is the third highest quarter since tracking of the CEPGI began, lagging only the immediate two preceding quarters by 3 and 35 patents respectively, along with being up 100 over the second quarter of 2010.
The CEPGI, published quarterly by the HRFM Cleantech Group provides an indication of the trend of innovative activity in the Clean Energy sector -
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Say What You Mean: Vague Patent Licenses Can Grant More Rights Than Intended
by Garth H. Mashmann
In its recent opinion General Protecht Group, Inc. v. Leviton Manufacturing Co., Inc., 2011-1115, 2011 WL 2666222 (Fed. Cir. July 8, 2011), the Court of Appeals for the Federal Circuit affirmed the district court's grant of a preliminary injunction to enforce a forum selection clause in a settlement agreement and provided a reminder that care should be used when drafting a licensing agreement.
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Federal Circuit Raises the Bar for Inequitable Conduct
by Teige P. Sheehan
In May 2011, the Federal Circuit issued a landmark en banc ruling in Therasense, Inc. v. Becton, Dickinson & Co. that redefi ned the doctrine of inequitable conduct. A judge-made doctrine that evolved from the principle of unclean hands to deny patent rights to those who engaged in deceptive misconduct in obtaining patents, the doctrine of inequitable conduct had become so commonly invoked as a defense in patent litigation that in 1988 the Federal Circuit famously stated that it had become "an absolute plague."
Reprinted with permission from: Bright Ideas, Fall 2011, Vol. 20, No. 2, published by the New York State Bar Association, One Elk Street, Albany, New York 12207, (1-800-582-2452), http://www.nysba.org/
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Welcome to a Brave New (Patent) World!
by Jeff Rothenberg
The U.S. Patent system is on the verge of the most significant transformation in nearly 60 years. Congress has passed and President Obama signed into law on September 16, 2011, the Leahy-Smith America Invents Act. Among many major revisions, this patent reform legislation will shift the US from a "first to invent" to a "first inventor to file" system, establish an absolute novelty standard for patentability (with a limited exception for an inventor's own earlier publication), and create new mechanisms for reviewing granted patents before the US Patent and Trademark Office.
For more details on the new patent reform legislation, please read the Client Alert published in this issue of our newsletter.
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Attorney Spotlight:
Opting for law school over medical school, and a life on the east coast rather than the west coast, the path to a career in intellectual property law has been scenic for Caroline Ahn, an Associate in the firm's Albany, NY office where she has a diverse practice in litigation, copyright and trademark protection and licensing, and internet law.
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Announcements
HRFM announces the addition of new associate attorney Teige P. Sheehan, Ph.D.
Partner Susan E. Farley named among Top 25 Women Attorneys in Upstate New York
Five HRFM Partners named as "New York Super Lawyers" by Law & Politics.
HRFM announces the addition of two new attorneys, George S. Blasiak , as of counsel, and Dmitry Andreev as associate attorney.
HRFM announces the addition of New Partner
John W. Boger.
Upcoming Events
On November 5, 2011, David P. Miranda, the first Tweeting Secretary of the New York State Bar Association, will be sending live tweets with the latest news and updates from the NYSBA House of Delegates meeting in Albany. Don't miss it!
On November 10, 2011,
Brian E. Reese will participate in a panel discussion regarding "Careers Away from the Bench" at Penn State University.
On November 12, 2011, David P. Miranda will be speaking on the subject of How Intellectual Property Powers Economic Growth, at TEDx, located at The Linda Performing Arts Studio, in Albany, New York.
On November 11th and 18th, HRFM will be a sponsor of the Albany Pre-Seed Workshop.
Recent Events
On October 26, 2011, Victor A. Cardona moderated at the Alliance for Clean Energy's annual meeting on Innovation in New York.
On October 21, 2011 David P. Miranda spoke on the subject of depositions and discovery, at NYSBA Young Lawyers Section meeting in Albany, NY.
On Sept. 15, 2011, Jeff Rothenberg presented on "Intellectual Property Issues Crucial to Medical Innovation Developers" at the 23rd Annual Conference of the Society for Medical Innovation and Technology, in Tel Aviv, Israel.
On September 13, 2011, John W. Boger moderated on the subject of the Patent Reform Act at the MedTech Annual meeting titled "How U.S. Patent Law Will Shape The Competitive Landscape". |
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Contact Us
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Heslin Rothenberg Farley & Mesiti P.C.
5 Columbia Circle
Albany, NY 12203
(518) 452-5600
Western New York:
100 Meridian Centre
Suite 250
Rochester, NY 14618
(585) 288-4832
www.hrfmlaw.com
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Heslin Rothenberg Farley & Mesiti P.C. is the largest law firm in New York's Tech Valley devoted exclusively to intellectual property law. Since 1970, we have been helping clients advance their business and protect new ideas, from concept to commercialization. The Heslin Rothenberg Farley & Mesiti IP Law Bulletin summarizes recent IP law news and noteworthy developments at our firm. Its contents do not constitute legal advice. Disclosure required pursuant to U.S. Treasury Department Circular 230: This written advice is not intended or written to be used, and cannot be used by any taxpayer, for the purpose of avoiding penalties that may be imposed on the taxpayer.
We welcome your comments.
Annette I. Kahler
Caroline B. Ahn
Kathryn K. Frederick  | |
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