Since being founded in 1980, Abelman Frayne & Schwab has grown and established itself as a leading law firm specializing in the protection and enforcement of all forms of intellectual property in the United States and throughout the world. Our clients include major companies in virtually all areas of business, including apparel, alcoholic beverages, automotive, chemical, cosmetics, computers, electronics, entertainment, financial services, foods, hotel services, petroleum, pharmaceuticals, publishing, real estate, retail telecommunications, and toys. While many of our clients are Fortune 500 companies, we pride ourselves on being able to assist smaller companies and individuals in protecting and developing their intellectual property.
Alex Zinchuk joined Abelman Frayne & Schwab in 2005 as a patent agent. Prior to joining the firm, for 25 years Alex worked as a patent agent in several other patent law firms in Cleveland and in New York City. Alex concentrates his practice on patent prosecution in the mechanical and electrical fields.
Mr. Terranella specializes in U.S. and international trademark prosecution. Mr. Terranella is a member of the Trademark Office Practices Sub-committee of the International Trademark Association (INTA).
Frank Terranella joined the firm in 2000 as an associate attorney in the trademark department. Prior to joining the firm, Frank was a partner in a general practice firm for two years. One of his clients during this time was Ingersoll Rand, for whom he acted as trademark counsel. Prior to that, he was General Counsel of Blenheim Group, Inc., a trade show producer. During his five years there, Frank brought all trademark work in-house, registered scores of trademarks and advised on the proper use of trademarks in materials produced by the company.
Frank concentrates his practice on all aspects of U.S. trademark prosecution from search to registration to maintenance. He is very familiar with the workings of the USPTO and has assisted in solving trademark registration problems for many clients over the last 12 years.
Charlie Stein joined Abelman Frayne & Schwab in 2007 upon graduating law school. Prior to entering the intellectual property practice, he gained extensive experience as a licensed Professional Engineer in the electric utility, pulp and paper, and water and waste-water treatment industries.
Charlie concentrates his practice on patent prosecution, including U.S. and PCT applications and the management of foreign patent applications. He also has developed extensive experience in preparing opinions of counsel, including freedom to operate, noninfringement, and invalidity.
He has worked on matters involving a wide array of electrical and electro-mechanical technologies, including power converters, regenerative drives, static reactive power production, negative sequence current injection, wind turbine blade pitch, and low voltage ride through of turbine systems.
Theodore J. Pierson joined Abelman Frayne & Schwab in 2008 as an associate in the patent department. Prior to joining the firm, Mr. Pierson was an associate at a New Jersey law firm practicing in all areas of intellectual property prosecution and litigation.
Mr. Pierson largely devotes his practice to preparing and prosecuting patent applications in various fields of technology, with an emphasis in the mechanical arts and medical devices, including power tools, fitness equipment, catheters, ports, and tissue ablation devices. His experience includes all phases of domestic and foreign patent prosecution (including PCT prosecution).
Mr. Pierson has intellectual property litigation experience including discovery, legal research, and motion practice. He has represented clients in the federal courts within New Jersey. He has also been admitted to represent clients pro hac vice in courts located in other states, including federal courts in Virginia and Connecticut.
Mr. Pierson has prepared opinions of counsel for a variety of patent matters concerning infringement, validity, and patentability. He also has experience in performing due diligence on intellectual property portfolios for mergers and acquisitions.
Steven Hertzberg specializes in patent prosecution and related matters, including infringement investigations and opinions. Prior to entering the intellectual property practice, he gained extensive experience as an engineer in the aerospace and computer industries, and served as corporate counsel for ION Computer Systems, Inc..
Bar and Court Admissions
Erica Halstead joined Abelman Frayne & Schwab in 2008 as an associate attorney in the trademark department. Prior to joining the firm, Erica specialized in both foreign and domestic trademark practice at a NYC intellectual property boutique firm. Additionally, Ms. Halstead managed the trademark and copyright portfolio of an education-centric software company.
Erica concentrates her practice on U.S. trademark prosecution, policing, enforcement, clearance and counseling. This includes practice before the U.S. Trademark Trial and Appeal Board in both opposition and cancellation proceedings. Erica also has experience in negotiating and preparing Assignments, License and Co-existence Agreements.
Ralph joined Abelman Frayne & Schwab in 2008 as an associate attorney. Prior to joining the firm, Ralph was concurrently a sole practitioner and counsel for Reveo, Inc., and between 2001 and 2006 exclusively IP counsel and Vice President for Reveo, Inc., where he managed a large, technically diverse patent portfolio.
Ralph’s practice concentrates on patent preparation, prosecution and counseling, in the areas of chemical engineering, chemistry and petrochemical processing systems and controls.
Ralph has patent related experience in various technical fields, including chemical processing, electrochemical cells and components, semiconductor processing, liquid crystal devices, mechanical devices, agricultural systems, biotechnology, encoding security systems, computer software, and various consumer products.
Victoria Coleman joined Abelman Frayne & Schwab in 2011 as an associate attorney in the litigation group. Prior to joining the firm, Victoria was an Assistant District Attorney at the Bronx District Attorney’s Office in the Investigations Division where she prosecuted, among other things counterfeit, piracy and fraud crimes. She also participated in a global forum on anti-counterfeiting strategies at the United States Patent Trademark Office.
Victoria’s practice is focused on litigation cases involving patent, trademark, trade secret and copyright issues on both the plaintiff and defense side. As a member of the litigation group she strategizes to determine the best, most efficient method to obtain optimal results for clients. Victoria is involved in fact gathering, drafting pleadings, electronic discovery and preparing for trial and depositions. Victoria also assists in counseling clients to developing an IP protection program and determine the best way to protect their IP internationally.
Lori Cohen joined Abelman Frayne & Schwab in 1997 where she was an associate through 2002. After a hiatus, Lori returned to the firm in 2007. Prior to joining the firm in 1977, Lori was in house trademark counsel at Jordache Enterprises, Inc. where she was responsible for procuring, maintaining and enforcing rights in the well known Jordache trademarks throughout the world. Lori has also been associated with Hale and Dorr, now Wilmer Hale & Gibbons, where she practiced domestic and international trademark prosecution in industries including pharmaceuticals, wearing apparel, and technology.
Jay Cinamon joined Abelman Frayne & Schwab in 1986 after 20 years as a Senior Patent Attorney at International Paper Company. Jay is experienced in the preparation and prosecution of chemical, pharmaceutical, mechanical and design patent applications before the U.S. Patent and Trademark Office, the European Patent Office and various foreign patent offices, inter parties proceedings in the USPTO, and the preparation of infringement and validity opinions.
Aimee Allen primarily specializes in litigation and transactional work on commercial trademark matters, principally TTAB opposition and cancellation proceedings and USPTO trademark prosecution. She has additional expertise in copyright law and licensing for artists and arts organizations in music, photography, film, visual arts and related fields, as well as experience with the music industry licensing, publishing, and recording contracts.
Davis Toren is a contributor to the Encyclopedia of Patent Law and Law for Executives and Patentrecht In den USA, in addition to contributing articles to a variety of U.S. and German legal publications. Mr. Toren taught law at Newark College of Engineering and has lectured extensively, primarily in Germany, on intellectual property. He is fluent in German, Swedish, Danish, Norwegian and Hebrew.
Tom Spath joined Abelman Frayne & Schwab in 1995 as Of Counsel to continue the patent and trademark practice specialties he developed over the prior 25 years as a partner in two other intellectual property specialty firms in NYC.
Tom’s current practice is focused on patent preparation and prosecution in the U.S. Patent and Trademark Office, and in international practice in numerous jurisdictions including the EPO, China, and Japan.
Robert B. Smith’s practice specializes in patent prosecution, litigation, and counseling, primarily in mechanical and electrical engineering, advanced materials, and computer related technologies. He also has extensive experience in technology acquisition, opinion work, licensing, and trade secret litigation. In addition to district court litigation, he has argued a number of cases before the Court of Appeals for the Federal Circuit with a very high rate of success.
Mr. Smith’s practice has involved patents on communications satellites, tennis racquets and other sporting goods, microprocessor-based control systems, computer software, remote monitoring and control networks, medical devices, automobile engines and hybrid power plants, automobile transmissions, VVVF AC motor controls, automobile security devices, “smart” credit cards and credit card cryptography, plasma physics, elevators, razors, optics, diamond manufacture, aircraft jet engines, power plant equipment, optics, footwear, road paving machinery, hardware, tools, catalyst filters,telephone switching and communications equipment, optical devices for use in projector equipment, business methods, and wind turbines, as well as other areas.
Prior to joining Abelman Frayne & Schwab in 2009, Mr. Smith was a partner at the IP firm Brumbaugh, Graves, Donohue & Raymond. He subsequently practiced for 10 years at White & Case, and 10 years at Skadden, Arps, Slate Meagher & Flom.
Melvin Ortner has extensive experience in advising businesses and transactional matters including licensing, distribution, sourcing, real estate, and commercial agreements. Mel is experienced in advertising law and has successfully defended his clients’ promotional programs before the Federal Trade Commission. He also represents executives in employment and separation agreements.
Before joining Abelman Frayne & Schwab in 2003, Mel was the Vice President and Chief Counsel of Sara Lee Branded Apparel. Prior to that he was the Vice President and General Counsel of Playtex Apparel. In these capacities Mel was responsible for the management of high profile litigations. Today he serves on the board of directors of several corporations.
In the civic arena, Mel served two terms as an elected Trustee in the Village of Great Neck, where he also served as Deputy Major and Chairman of the Planning Board.
Jerry Dainow maintains a practice in all fields of intellectual property law with an emphasis on prosecution, licensing and counseling. He has been involved in diverse technical and commercial areas including medical and dental devices, complex mechanical and structural engineering, manufacturing equipment, engines, toys, appliances, designs and trademarks.
Jennifer Waitman joined Abelman Frayne & Schwab in 1998 as an associate attorney in the trademark department. Jennifer concentrates her practice on international trademark prosecution, litigation, cancellation and opposition procedures, counterfeit goods prosecution and the management of trademark portfolios. Her international trademark experience includes drafting of settlement and license agreements and analysis of trademark clearance reports.
Victor Tannenbaum is a founding member of the firm and specializes in licensing and distribution agreements, assignments, contracts, mergers and acquisitions, and changes in ownership, all with respect to intellectual property on a worldwide basis.
Julie Seyler joined Abelman Frayne & Schwab in 1988 as an associate attorney in the trademark department. Prior to joining the firm, Julie was an attorney with the United States Trademark Office, prosecuting trademark applications as well as preparing briefs and oral arguments before the Trademark Trial and Appeal Board.
Julie concentrates her practice on trademark counseling, prosecution and and inter party proceedings before the Trademark Trial and Appeal Board. Her experiences includes analyzing the registrability of trademarks, preparing oppositions and cancellations and following such cases through to final briefs and oral arguments before the TTAB.
Michael Schwab has been with the firm since 1997 and is a partner. Mr. Schwab specializes in trademark and copyright counseling, litigation and counseling on regulatory and other issues in the beverage alcohol, dietary supplement and food industries. His practice includes all aspects of a domestic and international trademark practice, including advising, searching the availability of marks, filing and prosecuting trademark applications, handling contested oppositions, cancellations and litigations, managing worldwide trademark portfolios, enforcing trademark rights, including gray market goods, anti-counterfeiting, and monitoring and preventing infringing third party trademarks, internet and related domain name use and advertising compliance.
Mr. Schwab also negotiates, drafts and interprets license and other agreements, monitors licensee compliance and manages intellectual property due diligence in connection with corporate mergers and acquisitions.
In the beverage alcohol, dietary supplement and food fields Mr. Schwab counsels clients on a wide variety of issues including federal, state, local and international regulatory compliance, international and domestic distribution agreements, federal alcoholic beverage label approval and state brand registrations, advertising compliance, trade practices and customs and international trade matters.
Jeffrey Schwab is a founding member of the firm. He is a patent attorney specializing in intellectual property litigation, licensing, Alternative Dispute Resolution (“ADR”), and advertising law. Mr. Schwab has written various articles on intellectual property licensing and has been a guest lecturer on intellectual property protection at major corporations, universities and bar associations. He was Chairman of the New York Intellectual Property Law Association subcommittee on ADR for 3 years. He has been lead counsel in a number of jury cases resulting in multi-million dollar awards for the Firm’s clients. He is an AV rated attorney by Martindale Hubbell, and have been selected for listing for 2013 Top-Rated Lawyers in Intellectual Property by American Lawyer Media and Martindale Hubbell.
Caridad Piñeiro Scordato joined Abelman Frayne & Schwab in 1980 as a clerk, attended law school at night and then worked as an attorney for a number of years before becoming a partner of the Firm in 1994.
Caridad specializes in international trademarks, computer and new media law, publishing and literary law, and international litigation. She has represented a broad range of clients in the pharmaceutical, entertainment, publishing, automotive, alcoholic beverage and food industries.
In the area of publishing and literary law, Caridad brings the unique experience and insights of being a New York Times and USA Today bestselling author, with knowledge of the inner workings of the industry.
As the Firm’s Managing Partner for IT, Caridad also has hands-on knowledge and experience in the computer and new media law areas.
Caridad is fluent in Spanish and has a working knowledge of Italian, French and Portuguese. With those language skills she has assisted clients in a number of important overseas due diligence, litigations, and negotiations.
Marie Anne Mastrovito joined Abelman Frayne & Schwab in 1999 as an associate attorney in the trademark department. Prior to joining the firm, Marie Anne was a Trademark Examining Attorney with the United States Patent and Trademark Office and served as a Staff Attorney with the law firm of Jones Day Reavis and Pogue assisting in unfair competition litigation.
Marie Anne concentrates her practice in the field of trademark prosecution and the representation of clients in Opposition and Cancellations actions and ex parte appeals before the U.S. Trademark Trial and Appeal Board. In addition, Marie Anne has represented clients in successful appeals to the United States Court of Appeals for the Federal Circuit.
Marie Anne is also experienced in trademark clearance and investigations, preparing cease and desist letters, drafting and negotiating coexistence agreements, and assignment of marks.
Peter Lynfield joined the firm in 1980. He has been a partner since 1986. Peter concentrates his practice on U.S. and International trademark, copyright, unfair competition and related matters counseling and litigation.
He has advised clients in various industries, including automotive products, pharmaceuticals, veterinary pharmaceuticals and products, fragrances and cosmetics, beverages, real estate development, pet food music labels and groups, charitable fundraising, food additives, television and film production, personal care products, international human rights organizations and health care facilities.
Peter’s practice includes representing clients in the selection and adoption of trademarks in all countries; searching, availability, registrability and related opinions; preparation, filing and prosecution of trademark applications in all countries of the world; oppositions, litigations and related actions involving trademarks, copyrights, trade dress, unfair competition, dilution and counterfeiting worldwide.
His practice also includes negotiating and drafting license agreements related to all forms of intellectual property; conducting due diligence, opinions and negotiating agreements in connection with the IP aspects of acquisitions, such as purchase and sales agreements, license agreements, IP security agreements, assignments; recordal of assignments and security agreements worldwide; acquiring domain names through negotiations and alternative dispute resolution procedures; advising clients on issues relating to compliance with U.S. sanctions administered by the Office of Foreign Assets Control.
Norman Hanson joined Abelman Frayne & Schwab in 2011 as a partner. Prior to joining the firm, for 12 years Norman was a partner at Fulbright & Jaworski, a partner at Felfe & Lynch for 6 years and an associate for 8 years, and an associate at Cooper & Dunham for 2 years.
Norman’s practice focuses on patent prosecution, interferences, and counseling, in the areas of biotechnology, biochemistry, chemistry, and pharmaceuticals.
He has drafted over 400 patent applications, and has served as lead or associate counsel in approximately 15 interferences. His litigation experience includes deposition practice in the biotechnological and chemical arts, document review and preparation of pleadings. He has argued before the Court of Appeals for the Federal Circuit and was prevailing counsel in Bosies v. Benedict, 27 F. 3d 539 (1994), and In re Gangadharam, 889 F. 2d 1011 (1989).
Anthony DiFilippi joined Abelman Frayne & Schwab in 1995 as an associate attorney in the litigation department. Anthony concentrates his practice on patent, trademark and copyright litigation and counseling. His litigation experience includes analyzing patents and technical issues, preparing pleadings and briefs, taking and defending depositions of fact witnesses, assisting technical experts in their preparation of expert reports, conducting and defending depositions of expert witnesses, and examining witnesses at trial.
Anthony Coppola joined Abelman Frayne & Schwab in 1996 and concentrates his practice in patent, trademark and copyright litigation, patent prosecution, intellectual property licensing, and transactional matters. He has successfully litigated cases in the areas of patent infringement, trademark infringement, theft of trade secrets, trademark counterfeiting and product liability in various jurisdictions throughout the United States.
Anthony’s technical background has allowed him to analyze clients’ technologies and establish their freedom to operate. He has prepared comprehensive opinions of counsel and successfully negotiated favorable licenses and settlements in numerous patent and trademark disputes.
Joseph Catanzaro is experienced in all aspects of Intellectual Property and specializes in patent practice, including preparing, filing and prosecuting patent applications, appeals, interferences and related Patent office matters; preparing, filing and prosecuting international patent applications; patentability, right-to-use and due diligence investigations and opinions; patent licensing and related matters.
Ned Branthover is the author of “Federal Dilution Act: Famous Marks Get Greater Protection”, Japanese Trademark Journal and has lectured on Developments in Trade Dress Protection Since Two Pesos v. Taco Cubana to the Westchester & Fairfield Corporate Counsel Association, 1995. He has also been a lecturer on trademark matters at the INTA Annual Meetings 1996-1999.
Michael Aschen practices intellectual property litigation and counseling. Michael devotes the majority of his time to litigating cases before the U.S. district courts. His litigation experience includes analyzing patents and technical issues, preparing pleadings and briefs, taking and defending depositions of fact witnesses, assisting technical experts in their preparation of expert reports, conducting and defending depositions of expert witnesses, and bench and jury trials.
Michael has litigation experience in wide array of industries including entertainment, television, automotive, professional sports, petroleum, consumer products, apparel, jewelry, Internet, alcoholic beverages, publishing, finance, printing, telecommunications, magnetics, pet products, semiconductors, fertilizers, industrial piping, hardware, and retail.
Michael has also argued numerous appeals before the United States Courts of Appeal for the Second, Sixth, Ninth, Eleventh and Federal Circuits.
Michael provides clients with counseling regarding the development of patent portfolios, has prepared opinions of counsel, identified and resolved potential infringement disputes, and counseled clients regarding licensing opportunities.
Larry Abelman is a founding member of the firm. Mr. Abelman is well known for his expertise in international and domestic trademark protection and litigation, licensing and distributorship agreements, entertainment and media law.
Since Abelman Frayne & Schwab was founded in 1980, the Firm has grown and established itself as a leader, both in the United States and overseas, in the protection and enforcement of all forms of intellectual property. Our clients include major corporations in virtually all industries, including apparel, alcoholic beverages, automotive, chemical, cosmetics, computers, electronics, entertainment, financial services, foods, hotel services, petroleum, pharmaceuticals, publishing, real estate, retail, telecommunications, and toys. For more information on the Firm’s areas of expertise, please click on the Practice Areas link in the menu bar above.
Our attorneys have wide ranging experience in many specialties including patents, trademarks, copyrights, licensing, contracts, mergers and acquisitions, entertainment, new media law, and Internet law. For more information on our attorneys, their areas of expertise, and contact information, please click on the Attorneys link in the menu bar above.Home
On July 4, 1933 the United States Patent Office issued U.S. Patent No. 1,917,099 entitled, “X-Ray Tube” to William D. Coolidge of Schenectady, New York.
William David Coolidge was an American physicist, who made major contributions to the development of X-ray machines. The ‘099 patent was one of a number of patents Coolidge received in the field of x-ray technology. His tubes completely revolutionized the generation of X-rays and remain to this day the model upon which all X-ray tubes for medical applications are patterned.
He was the director of the General Electric Research Laboratory and a vice-president of the corporation. He was also famous for the invention of “ductile tungsten”, which found it most important use as the filament in the incandescent light bulb.
Coolidge was born in Hudson, Massachusetts. He studied electrical engineering from 1891 until 1896 at the Massachusetts Institute of Technology (MIT). He went to Germany for further study and received his doctorate from the University of Leipzig. From 1899 to 1905 he was a research assistant to Arthur A. Noyes of the Chemistry Department at MIT.
Coolidge went to work as a researcher at General Electric’s new research laboratory in 1905, where he conducted critical experiments that led to the use of tungsten as filaments in light bulbs. (Note: He received a patent on this technology in 1913. However, it was later held by a court that his 1913 patent was not valid due to obviousness). In 1913 he invented what became known as the “Coolidge tube,” an X-ray tube with an improved cathode for use in X-ray machines that allowed for more intense visualization of deep-seated anatomy and tumors. The Coolidge tube, which also utilized a tungsten filament, was a major development in the then-nascent medical specialty of radiology, and its basic design is still in use. He filed for a patent on his x-ray tube in 1913 and it was granted as US Patent No. 1,203,495 in 1916.
Coolidge was awarded the American Institute of Electrical Engineers Edison Medal in 1927 For his contributions to the incandescent electric lighting and the X-rays art. He had rejected this prestigious award in 1926 on the basis that his ductile tungsten patent (1913) was ruled invalid.
He worked in many diverse technologies in his career and developed products ranging from high-quality magnetic steel to improved ventilating fans and the electric blanket. During World War II he contributed research to projects involving radar and radar countermeasures. Coolidge was awarded 83 patents during his lifetime.
In 1975 he was elected to the National Inventors Hall of Fame, shortly before his death at the age of 101 in Schenectady, New York.
Make some Intellectual Property History this week!By: Anthony A. Coppola, partner Abelman, Frayne & Schwab
Jeffrey A. Schwab, Esq.
The Federal Circuit has provided additional clarification about how “broadest reasonable interpretation” (BRI) is to be applied in Inter Partes Review (IPR) proceedings, bringing BRI claim interpretation standards closer to those applied by the courts.
In its June 16, 2015 Decision in Microsoft Corporation vs. Proxyconn, Inc., the Federal Circuit clarified the BRI standard used by the PTAB in IPR Proceedings. The Decision provides meaningful guidance and may serve to limit what many have believed to be an overly expansive application of BRI by the PTAB.
Earlier in 2015 in the case of In re Cuozzo Speed Techs, LLC, 778F.3d. 1271 (Fed. (BRI) Cir. 2015), the Federal Circuit held that the broadest reasonable interpretation standard in IPR proceeding was properly adopted by PTO regulation. In Microsoft, the Federal Circuit, for the first time placed some parameters on its breadth. The court held that the PTAB may not construe claims so broadly that its constructions are unreasonable—and what is or is not reasonable must be guided by general claim construction principles.
The Court noted that the claim should always be read in light of the specification and teachings in the underlying patents; that the PTAB should consult the patent’s prosecution history and proceedings in which the patent has been brought back to the agency for a second review; and even under BRI claim construction cannot be divorced from the specification and the record evidence and must be consistent with the one that those skilled in the art would reach. In the words of the Federal Circuit:
A construction that is “unreasonable broad” and which does not “reasonably reflect the plain language and disclosure” will not pass muster.
The case which brings claim interpretations standards closer to those used in Markman proceedings will no doubt be heavily relied upon by patent owners to prevent overly broad interpretations.
In an article entitled “ICANN: Life After Fadi Chehadé” and published in Trademarks & Brands Online, Greg Shatan, an Abelman Frayne & Schwab partner and President of the Intellectual Property Constituency of ICANN, discusses the future for the Domain Name System controller after the resignation of its CEO, Fadi Chehadé.
Norman Hanson, Esq.
Even breakthrough technology can be patent ineligible. On June 12, 2015, the Court of Appeals for the Federal Circuit issued its opinion in Ariosa Diagnostics, Inc. v. Sequenom, Inc. This decision included a majority opinion by two of the three judges on the panel, and a “concurrence” that signal an extremely restrictive approach to biotechnology inventions perhaps not intended by the Supreme Court, following Ass’n for Molecular Pathology v. Myriad Genetics and Mayo Collaborative Services v. Prometheus Laboratories.
In Ariosa the inventors had discovered that paternal fetal DNA circulated in the body fluids of pregnant women, such as serum or plasma. This “cell free fetal DNA,” or “cffDNA” afforded an opportunity to determine if fetuses carried defects inherited from their fathers. The determination can therefore be made without the need to carry out invasive steps, including taking samples from the fetus. The materials used as the source of the cffDNA were typically treated as medical waste material, and discarded.
The inventors carried out standard techniques, including amplifying the relevant DNA and then analyzed it via, e.g., comparing the amplified DNA to a normal sample.
Claim 1 of the ‘540 Patent reads:
1. A method for detecting a paternally inherited nucleic acid of fetal origin performed on a maternal serum or plasma sample from a pregnant female, which method comprises
amplifying a paternally inherited nucleic acid from the serum or plasma sample and
detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample.
In determining that the claims of the ‘540 Patent were not patentable subject matter under 35 U.S.C. § 101, the Court first held that cffDNA was itself a naturally occurring product, which could not be patented as a product. As the patent presented method claims, the Federal Circuit held that Mayo’s framework required the Court to:
“(E)xamine the elements of the claim to determine whether the claim contains an inventive concept sufficient to transform the claimed naturally occurring phenomenon into a patent eligible application.”
The Court concluded that it did not. It based its holding on the rationale that the method steps recited in the claims, were all well known, routine steps for processing at the time of the filing of the application. According to the Court:
“The only subject matter new and useful as of the date of the application was the discovery of the presence of cffDNA in maternal plasma or serum.”
Essentially, the Court separated the claimed invention into two components: (i) the sample analyzed, and (ii) the method steps, read broadly, without reference to the sample. As neither of these components were viewed as patentable on its own, combining them did not create a patentable invention:
“Where claims of a method patent are directed to an application that starts and ends with a naturally occurring phenomenon, the patent fails to disclose patent eligible subject matter if the methods themselves are conventional routine and well understood application in the art.”
The judges who were a part of the majority opinion were not persuaded by evidence that the scientific community regarded the inventors’ work as significant. The majority opinion gave no weight to the over 1000 citations of the original paper describing the work. Although the opinion expressed agreement that the work revolutionized pre-natal care, it went on to quote the Supreme Court’s statement in Myriad Genetics that “ground breaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.”
Judge Linn wrote a concurring opinion, but was very clear that he was joining in the invalidation decision because Supreme Court precedent required him to do so. The first sentence of his concurrence states:
“I join the Court’s opinion invalidating the claims of the ‘540 Patent only because I am bound by the sweeping language of the test set out in Mayo…”.
Judge Linn went on to express his displeasure with the Mayo test, and noted the consequences of the test resulted in “excluding a meritorious invention from the patent protection it deserves and should have been entitled to retain.”
Judge Linn argued that the rationale of Diamond v. Diehr should apply, and that a new combination of steps in a process may constitute a patentable invention, even if all of the constituent steps were well known, and in common use before the new combination was made. Judge Linn went on to discuss how the Mayo case could be distinguished from the situation presented by Ariosa, i.e., in Mayo, the steps of the method at issue were in fact steps already being practiced at the time of the invention, while no one was carrying out the steps involved in Ariosa, and the material used was in fact routinely discarded. Judge Linn concluded his concurrence with:
“But for the sweeping language in the Supreme Court’s Mayo opinion, I see no reason in policy of statute why this breakthrough invention should be deemed patent ineligible.”
It is unclear whether Sequenom intends to seek en banc review by the Federal Circuit, or will consider petitioning the Supreme Court for review. We will monitor the status of the case and suggest that any claims to methods which use naturally occurring products be reviewed, at least for the time being, to determine if the method per se would constitute a patentable invention.
Michael J. Schwab, Esq.
On April 20, 2015 a three judge panel of the Court of Appeals for the Federal Circuit (“CAFC”) affirmed the Trademark Trial and Appeal Board’s (“TTAB”) decision refusing to register the mark THE SLANTS for “entertainment in the nature of live performances by a musical band” on the grounds that the mark violated Section 2(a) of the Lanham Act (“Section 2(a)”) because it was disparaging of people of Asian descent. In re Simon Shiao Tam, Appeal No. 2014-1203 (Fed. Cir. April 20, 2015). However, on April 27, 2015 the CAFC issued an order vacating its opinion and ordering an en banc hearing on the following issue: “Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?”
The CAFC’s decision to vacate was likely spurred by the separate opinion Circuit Judge Kimberly A. Moore added to the panel’s decision. In 24 pages of “additional views” Judge Moore suggested that it was time for the CAFC to re-examine the precedent upholding the constitutionality of Section 2(a). Judge Moore’s analysis appears to be the spark that ignited the CAFC’s re-examination of the constitutionality of this section of the Lanham Act which opponents have argued empowers the Trademark Office to suppress protected commercial speech.
Section 2(a) provides that the Trademark Office may refuse to register a mark that “consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . .” 15 U.S.C. § 1052(a). The TTAB applies the following two part test to determine if a mark is disparaging: (1) what is the likely meaning of the matter in question, taking into account not only dictionary definitions, but also the relationship of the matter to other elements in the mark, the nature of the goods and services, and the manner in which the mark is used in the marketplace, in connection with the goods or services; and (2) if that meaning is found to refer to identifiable persons, institutions, beliefs or national symbols, whether that meaning may be disparaging to a substantial composite of the referenced group.
In 2010, Simon Shiao Tam, the “front man” for the Asian-American dance band called The Slants, filed an application to register THE SLANTS for “entertainment, namely live performances by a musical band.” The application was refused on the basis that the mark was disparaging to people of Asian descent. Tam appealed, but did not file a brief and the appeal was dismissed.
In 2011 Tam filed a second application for the identical mark for nearly identical services. Relying on evidence gathered in relation to Tam’s earlier application the Trademark Office rejected the second application also on the basis that THE SLANTS is disparaging. The TTAB affirmed the rejection. Referring to the band’s website which displayed the mark next to a depiction of an Asian woman and utilized rising sun and dragon imagery as well as to a statement by Tam that he selected the mark to “own” the stereotype it represents, the TTAB found it “abundantly clear” that THE SLANTS would be perceived as referring to people of Asian descent. Citing dictionary definitions and evidence of individuals and groups in the Asian community who objected to Tams’ use of the word “slant,” the TTAB also found the mark to be disparaging to a substantial composite of people of Asian descent.
Tam appealed to the CAFC arguing the TTAB erred in finding the mark THE SLANTS disparaging and challenging the constitutionality of Section 2(a). Specifically, Tam claimed that Section 2(a) is unconstitutional because it restricts protected speech, is vague and that the TTAB’s two-part disparagement test violated his right to due process and equal protection. The CAFC rejected all of Tam’s arguments and affirmed the TTAB’s decision.
First, the court concluded that that there was substantial evidence to support the TTAB’s finding that THE SLANTS referred to people of Asian descent and that the term is “disparaging to a substantial composite” of people of Asian descent. Therefore, the TTAB did not err in finding THE SLANTS to be disparaging.
With respect to the constitutionality of Section 2(a), the CAFC, citing In re McGinley, 660 F2d 481 (C.C.P.A. 1981), held that because a refusal to register a mark does not affect an applicant’s right to use the mark “[n]o conduct is prescribed and no tangible form of expression is suppressed.” Therefore, Tam’s First Amendment rights were not abridged by the refusal to register his mark. The CAFC also ruled that Section 2(a) was not unconstitutionally vague because the TTAB’s two-part disparagement test is “sufficiently precise” to allow the standard to be applied fairly. With respect to due process the CAFC found that Tam’s rights were not infringed despite the registration of other trademarks containing disparaging terms because Tam had a fair opportunity to prosecute and appeal the rejection of his application. Further the rejection confirmed the Trademark Office’s practice of evaluating each application on its own merit. An error made in another application cannot justify the improper registration of another application. Finally, CAFC rejected Tam’s equal protection argument finding that Tam’s registration was rejected not because of his race, but because THE SLANTS was used in a disparaging manner. A trademark refusal does not violate equal protection where there are nondiscriminatory reasons for denying the registration.
In a separate addendum to the opinion Judge Moore expressed her belief that it is time for the CAFC “to revisit McGinley’s holding on the constitutionality of Section 2(a)’s prohibition against registration of marks deemed disparaging.” Noting that the McGinley decision has been widely criticized and that “First Amendment jurisprudence on the ‘unconstitutional conditions’ doctrine and the protection accorded to commercial speech has evolved significantly” since the decision was issued, Judge Moore opined that ”the time has come to give” the issue of the constitutionality of Section 2(a) the “consideration it is due.”
There are three requirements for finding a violation of the First Amendment. These are (i) the speech at issue must be protected speech; (ii) there must be governmental action that abridges that speech; and (iii) the abridgment must be unconstitutional when analyzed under the appropriate legal framework. Judge Moore’s analysis of these factors suggests Section 2(a)’s prohibition against registration of disparaging marks violates the First Amendment.
First, Judge Moore concludes that a trademark is a form of protected commercial speech. It identifies the source of a product or service and provides commercial information to consumers. While it is true that some trademarks are used solely as a source identifier, that it is not the case with THE SLANTS. Tam selected the name “to ‘reclaim’ and ‘take ownership’ of Asian stereotypes.” “With their lyrics, performances, and band name, Mr. Tam and The Slants weigh in on cultural and political discussions about race and society that are within the heartland of speech protected by the First Amendment.”
Second, Judge Moore argues that Section 2(a) abridges protected commercial speech. While a refusal to register does not affect an applicant’s right to use a trademark, it does deny the applicant access to the significant benefits provided by registration. Citing the recent Supreme Court decision in B&B Hardware, Inc. v. Hargis Ind., Inc., Judge Moore noted that “[r]egistration is significant” and “confers important legal rights and benefits on trademark owners who register their marks.” These benefits, which are not available in the absence of a federal registration, “are numerous, and include both substantive and procedural rights.” “Section 2(a)’s content-based restrictions on registerability were adopted to reduce use of trademarks the government deemed unsuitable (such as those that disparage) – no doubt a chilling effect on speech.”
Further, Judge Moore notes that Section 2(a) has never been analyzed under the “unconstitutional conditions” doctrine. Under this doctrine the government may not deny a benefit to a person on a basis that infringes a constitutionally protected interests such as free speech. A federal registration of a trademark confers valuable benefits on the owner and, pursuant to Section 2(a) the government conditions those benefits on the choice of the mark. Since Section 2(a) allows the government to deny benefits on the basis of the applicant’s constitutionally protected speech, the “unconstitutional doctrine” applies to an analysis of the section. “The government cannot hinge the benefits of federal trademark registration on constitutionally protected speech – here, the applicant’s selection of a suitable mark – unless the government’s action pass constitutional scrutiny.”
Judge Moore then found that Section 2(a) did not pass constitutional scrutiny when analyzed under the framework used to determine the constitutionality of restrictions on commercial speech. In Central Hudson Gas & Electric Corp. v. Public Service Commission, 447 U.S. 557 (1980) the Supreme Court established the test for reviewing the constitutionality of restrictions on commercial speech including that the regulation must advance a substantial government interest. Judge Moore, after reviewing a number of possible interests the government may have in refusing to register a mark deemed disparaging, could not identify “any substantial interest that would justify the [Trademark Office’s] refusal to register disparaging marks.”
Judge Moore presents compelling arguments challenging the constitutionality of a refusal to register a trademark on the basis that a mark is disparaging. She has apparently persuaded a number of her colleagues on the CAFC that the issue deserves the full attention of the court. Could her analysis provide the road map that leads to an end to trademarks being refused registration on the basis that they are disparaging?
We are monitoring the case and will provide updates as developments occur.