The High-Tech Patent Wars Continue…

Written by: Mark Terry The high-tech world is continuing its 20-way patent infringement war, but it’s not the usual suspects – it’s Yahoo vs. Facebook. Yahoo’s lawsuit claims that Facebook is infringing on Yahoo’s social networking patent (US7599935), which may be the basis of Facebook’s networking platform. As of late, the superstar high tech companies have been aggressively taking it to their competitors to protect their current revenue streams, but also, more importantly, to secure a dominant position in the future. Yahoo, which has been struggling over the last three years, recently lost ground to Facebook in the online advertising market. There is

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Coca Cola Copyright Infringement Suit in Miami Concluded

Written by: Mark Terry Southern District Court Judge K. Michael Moore recently handed down an equitable and somewhat unique decision regarding a timely dispute over the rights to a Spanish-language version of a Coca-Cola theme song that was created for the 2010 World Cup. At issue in the suit, Vergara Hermosilla v. Coca-Cola Co., No. 10-21418, 2010 WL 2232657 (S.D. Fla. June 2, 2010), was whether the South-Florida based artist retained rights to the content of his work product “Wavin’ Flag” – originally performed in English by the artist K’naan – in translating and producing the song. As a Miami-based trademark and

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Quick Post: Board of Patent Appeals Chimes In on “Well-Known Prior Art”

Written by: Mark Terry Today, the Board of Patent Appeals and Interferences (BPAI) reversed an Examiner’s rejection based on the “well-known prior art” argument. This Quick Post highlights the obligations that must be met by an Examiner when utilizing this form of rejection. Recall that M.P.E.P. §2144.03 states: “Official notice without documentary evidence to support an examiner’s conclusion is permissible only in some circumstances. While ‘official notice’ may be relied on, these circumstances should be rare when an application is under final rejection or action under 37 CFR 1.113. Official notice unsupported by documentary evidence should only be taken by the examiner

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Come See Me Speak Today at ITEXPO in Miami

Written by: Mark Terry I’m honored to be speaking at ITEXPO today at the Miami Beach Convention Center. ITEXPO is a telecommunications industry conference billed as “The World’s Communications Conference and Expo.” The conference is the largest and longest telecommunications industry trade show. I will be speaking today at various SUITS (Synopsis Under IP/Patents Telecom Sourcing Conference) panel discussions. Some of the topics I’ll be discussing are telecom industry patents, defending patent suits and patent trolls. I look forward to seeing you there!

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Polaroid: A Trademark’s Life After Bankruptcy(ies)

Written by Mark Terry Did we used to shake the film that came out of the Polaroid camera or did we wave it in the air? Everyone had their own technique to make the picture appear faster, I suppose. Regardless, the concept of Polaroid instant film made it into the pop culture – even making its way into an Outkast song (“… shake it like a Polaroid picture!”). But then Polaroid filed for bankruptcy in 2001 … and again in 2008! Did that mean the end of the iconic Polaroid brand? Far from it.             Land, the inventor of the Polaroid

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Would you have appealed this 101 Rejection?

Written by Mark Terry             In an homage to John Welch’s well-known TTAB Blog, today we ask “Would you have appealed this 35 U.S.C. § 101 rejection?             In a straightforward decision today, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner’s 35 U.S.C. § 101 rejection of a computer program product claim based on the disclosure of a transitory medium in the specification. This blog post highlights a very common rejection for software-related claims.             Recall that “A transitory, propagating signal . . . is not a process, machine, manufacture, or composition of matter [under 35 U.S.C. § 101] and,

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Quick Post: Board Finds Appellant Must Argue That Examiner Erred

Written by Mark Terry                In one of the more interesting decisions on this Friday, the Board of Patent Appeals and Interferences (BPAI) affirmed an Examiner’s rejection based on the Appellant forgetting to argue that the Examiner erred. This Quick Post highlights the basics of responding to Examiner rejections. Recall that “the Patent Office has the initial duty of supplying the factual basis for its rejection. It may not . . . resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The allocation of burdens requires that the USPTO

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Board of Patent Appeals Reverses Examiner’s Inherency Finding

Written by Mark Terry  In its first decision on this Friday the 13th, the Board of Patent Appeals and Interferences (BPAI), reversed an Examiner’s 103 obviousness rejection based on the Examiner’s faulty inherency logic. I like this reversal because it highlights the Examiner’s burden and the consequences of not meeting that burden – i.e., a win for the Applicant. With regard to inherency, recall M.P.E.P. 2112 states that where an Applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed

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The Value of Trademarks as Personal Brands

Written by Mark Terry  Michael Jackson’s unfortunate passing highlighted his international fame and the value of the Michael Jackson brand. What was surprising to many was that Michael Jackson had major financial troubles before his death, which is why he decided to go on his final “This Is It” tour. Michael Jackson’s music and products generated large amounts of income before his death, but I was stunned to see the magnitude of his earnings after his death. Since his death, the Michael Jackson brand, as reported by Billboard, has generated over $1 Billion from sales and a record deal. Much of

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