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Cantor Colburn June / July 2015 Newsletter

June 1, 2015
Ideas on Intellectual Property Law
June / July 2015

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Recent ruling offers encouragement to patent holders
Ever since the U.S. Supreme Court’s 2014 ruling in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, the road for would-be patent holders of software and business methods has been a rough one. Some have even suggested that Alice, and its progeny issued by the U.S. Court of Appeals for the Federal Circuit, represent the death knell for software patents. This article discusses the first post-Alice decision, which, as it turns out, actually offers some encouragement to software and business method patent holders.
DDR Holdings LLC v., No. 2013-1505, Dec. 5, 2014 (Fed. Cir.)
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, No. 13-298, June 19, 2014 (Supreme Court)

Something more: Trademark confusion standard clarified
Trademark applicants can run into trouble if their goods or services are considered similar to those of a third party’s registration, where the marks are also similar. A recent court ruling, however, clarified the standard that trademark examiners should use to evaluate the similarity of two parties’ respective goods and services. This article explains how the ruling is good news for applicants.
In re St. Helena Hospital, No. 2014-1009, Dec. 16, 2014 (Fed. Cir.)

On second thought
Ninth Circuit reverses course on the first sale doctrine

Costco customers often enjoy significant discounts on copyrighted products. This is good for them, but not so good for the copyright holder. Unfortunately for those copyright holders, a recent ruling by the U.S. Court of Appeals for the Ninth Circuit leaves them vulnerable to the “gray market” that makes some of these discounts possible. This article explores the case that pitted the big-box chain against a Swiss watch manufacturer.
Omega S.A. v. Costco Wholesale Corp., No. 11-57137, Jan. 20, 2015 (9th Cir.)
Kirtsaeng v. John Wiley & Sons, Inc., No. 11-697, March 19, 2013 (Supreme Court)

Abiding by the “original patent” rule when reissuing
Reissue patents allow a patentee to correct an existing patent by broadening or narrowing the originally issued claims. But, among other requirements, the reissue patent can claim only inventions that were described in the original patent specification as being intended to be a separate invention. This article covers a recent infringement case involving dueling pharmaceutical companies in which this “original patent” rule played a key role.
Antares Pharma, Inc. v. Medac Pharma Inc., No. 2014-1648, Nov. 17, 2014 (Fed. Cir.)

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