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..
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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
Charles Stein, Esq.
Devices manufactured by different companies can often work together because they adhere to standards established by industry groups. Where the standards are based upon patented subject matter (“standard essential patents” or “SEPs”), the standard-setting groups typically require that the patentee establish reasonable and non-discriminatory (RAND) terms for licensing its technology.
In patent infringement cases not involving standard essential patents, courts have long instructed juries to consider 15 factors, as formulated in Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp 1116 (S.D.N.Y. 1970). In RAND cases, a number of the Georgia-Pacific factors are partly or entirely inapplicable, leading to questions of how the trial courts should adjust the jury instructions. Four different district courts have addressed these questions, with those courts following different approaches.
On December 4, 2014, the Federal Circuit provided its guidance, in Ericsson, Inc. v. D Link Systems, Inc. In the trial court in the Eastern District of Texas, the judge had instructed the jury in the 15 Georgia-Pacific factors, adding a 16th “factor” referring to the patentee’s RAND obligations. The Federal Circuit held that approach was an error, as at least five of the 15 Georgia-Pacific factors were inapplicable under the facts of that case. The Federal Circuit explained that it could not formulate a modified version of the Georgia-Pacific factors that would apply to every RAND case, and that instead, trial judges must consider the evidence presented in the case when formulating the jury instructions.
Ericsson also provides guidance on apportionment analysis. In all patents, the royalty rate must be apportioned to the incremental value added by the patented invention, and this is particularly true for standard essential patents. The Federal Circuit held that the royalty rate for SEPS should reflect the value added solely by the technology, and not consider additional value that may be created due to the adoption of the industry standard.
Another issue relevant to patent litigation and particularly to RAND cases pertains to instructions on hold-up or royalty stacking. Hold-up refers to a patentee demanding excessive royalties from licensees who must conform to the patented industry standard. Royalty stacking becomes a problem if a licensee is faced with a significant number of SEPs that must be licensed in order to conform to the industry standard. The trial courts had different views of who should bear the burden for addressing whether there was improper hold-up or stacking. The Federal Circuit approved of the approach by the trial court in Ericsson, holding that an accused infringer requesting an instruction on patent hold-up and royalty stacking must provide evience in relation to the patentee’s RAND commitment.
The Federal Circuit’s opinion in Ericsson v. D-Link is viewed as favorable to the position of those companies who own patents that are the subject of industry standards.
On January 27, 1880, the United States Patent Office issued U.S. Patent No. 223,898 entitled, “Electric-Lamp” to Thomas Alva Edison of Menlo Park, New Jersey.
Considered one of the outstanding geniuses in the history of technology, Thomas Edison earned patents for more than a thousand inventions, including not only the incandescent electric lamp, but the phonograph, the carbon telephone transmitter, and the motion-picture projector as well.
Edison was one of the most prolific inventors of his time, holding a record 1,093 patents in his name. Most of these inventions were not completely original but improvements of earlier patents, and were actually made by his numerous employees – Edison was frequently criticized for not sharing credits. Nevertheless, Edison received patents worldwide.
The light bulb has been considered one of the millennium’s most significant inventions since it profoundly changed human existence by illuminating the night and making it hospitable to a wide range of human activity. But although Edison gets the credit, you might be interested to know that the “modern” electric light was actually invented in 1879 simultaneously by Edison in the United States and a man named Sir Joseph Wilson Swan in England.
Thomas A. Edison
The story of the electric light actually goes back to 1811, when Sir Humphrey Davy discovered that an electrical arc passed between two metal poles produced light. In 1841, experimental arc lights were installed as public lighting along the Place de la Concorde in Paris. Other experiments were undertaken in Europe and America, but the arc light eventually proved impractical because it burned out too quickly.
The solution to the problem lay not in an electrical arc in open space, but in electricity passed through a filament. This breakthrough theory became known as the Joule effect – named after James Prescott Joule, who theorized that electrical current, if passed through a resistant conductor, would glow white-hot when heat energy turned to luminous energy. The problem was devising the right conductor, or filament, and inserting it in a container, or bulb, without oxygen because the presence of oxygen would cause the filament to burn.
Swan was the first to construct an electric light bulb (circa 1860), but he had trouble maintaining a vacuum in his bulb to keep oxygen out. Edison solved this problem, and on October 21, 1879, he illuminated a carbon filament light bulb that glowed continuously for 40 hours.
Edison’s lamp consisted of a filament housed in a glass vacuum bulb. He had his own glass blowing shed where the fragile bulbs were carefully crafted for his experiments.
By January 1879, at his laboratory in Menlo Park, New Jersey, Edison had built his first high resistance, incandescent electric light. It worked by passing electricity through a thin platinum filament in the glass vacuum bulb, which delayed the filament from melting. On December 31 1879, Edison demonstrated incandescent lighting to the public for the first time in Menlo Park with much fanfare. On January 27, 1880 he received his ‘838 patent for the electric incandescent lamp.
Still, the lamp filament only burned for a few short hours. In order to improve the bulb, Edison tested thousands of other materials to use for the filament. He even thought about using tungsten (which is the metal used for light bulb filaments today) but he couldn’t work with it given the tools available at that time.
As the story goes, one day, Edison was sitting in his laboratory absent-mindedly rolling a piece of compressed carbon between his fingers. This gave him the idea of carbonizing materials to be used for the filament. He tested the carbonized filaments of every plant imaginable. Edison said that he, “tested no fewer than 6,000 vegetable growths, and ransacked the world for the most suitable filament material.” Edison finally decided to try a carbonized cotton thread filament. When voltage was applied to the completed bulb, it began to radiate a soft orange glow. Just about fifteen hours later, the filament finally burned out. Further experimentation produced filaments that could burn longer and longer with each test. By the end of 1880, he had produced a 16-watt bulb that could last for 1500 hours and he began to market his new invention.
However, the story is not over. On October 8, 1883 the U.S. Patent Office ruled that Edison’s patent was based on the prior work of a man named William Sawyer and was invalid. Litigation continued until on October 6, 1889, when a judge reversed the prior finding and ruled that Edison’s electric light improvement claim for “a filament of carbon of high resistance” was valid. However, research exposed in “A Streak of Luck” by Robert Conot ( 1979), shows that Edison and his attorneys hid significant information from the judge, having cut out a two week section (October 7-21, 1879) of a notebook.
Overseas, Edison’s battle with Swan in England resulted in Edson’s inability to patent the light bulb in the United Kingdom. However, after losing his court battle with Swan, they formed a joint company (Edi-Swan) to market the invention. This company and its technological heritage became a part of General Electric in 1892 and, over time, Swan became just an obscure name in history.
Despite all this, Life Magazine, in a special double issue, placed Edison first in the “100 Most Important People in the Last 1000 Years“, noting that his light bulb “lit up the world”. Although other less successful light bulbs may have been developed earlier, it was Edison who made the modern era possible by commercializing his “invention.”
Make some Intellectual Property History this week!By: Anthony A. Coppola, partner Abelman, Frayne & Schwab
Michael Schwab, Esq.
In a unanimous decision the U.S. Supreme Court held that trademark tacking is an issue of fact to be decided by a jury. “We hold only that, when a jury trial has been requested and when the facts do not warrant entry of summary judgment or judgment as a matter of law, the question of whether tacking is warranted must be decided by a jury.” Hana Financial, Inc. v. Hana Bank, 13-1211 (S. Ct. January 21, 2015).
Hana Financial and Hana Bank both provide financial services. Hana Financial sued Hana Bank for trademark infringement and Hana Bank asserted the defense of trademark tacking. Trademark rights arise from use of a trademark in commerce in connection with a product or service. Generally the first party to use a trademark in commerce owns the mark and is deemed to have priority. The doctrine of tacking permits a trademark owner to “tack” the date of first use of an older trademark onto a new trademark for purposes of determining priority if the new trademark is the “legal equivalent” of the older the trademark. To be legally equivalent the old and new trademarks must be materially similar and create the same commercial impression.
Federal courts disagree on whether the determination that two or more marks are “legal equivalents” is a question of law for a judge or a question of fact for the jury. The Supreme Court has now decided the issue holding that whether two marks may be tacked for purposes of determining priority is a question of fact to be addressed by a jury.
In her opinion, Justice Sotomayor indicated that the determination of the whether two or more marks create the same commercial impression is viewed “through the eyes of the consumer” and that “[a]pplication of a test that relies upon an ordinary consumer’s understanding of the impression a mark conveys falls comfortably with the ken of the jury.” The Supreme Court has “long recognized across a variety of doctrinal contexts that, when the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer.”
Issues concerning trademark tacking are relatively rare. Therefore, the Supreme Court’s decision may have limited impact on future trademark disputes. However, if the issue of tacking is raised trademark owners should now be permitted to seek to establish that two trademarks are legal equivalents through evidence related to consumer perception such as surveys.
Douglas J. Gilbert, Esq.
On January 20, 2015, the United States Supreme Court issued its decision in Teva Pharmaceuticals USA, Inc. v Sandoz, Inc. The Court held appellate review of subsidiary fact findings made in the course of patent claim construction must be reviewed in accordance with the clearly erroneous standard of Federal Rule of Civil Procedure 52(a)(6). This contrasts with a de novo review standard which will apply to the “ultimate construction” of the patent claim.
In the District Court, Sandoz had argued that a “molecular weight” term in the patent claims was indefinite pursuant to 35 U.S.C. 112, ¶ 2 because it did not state which of three possible methods of calculation was used to determine that weight. After hearing expert testimony from both sides, the District Court concluded the claim was sufficiently definite and that a person of skill in the art would calculate molecular weight according to the weight of the most prevalent molecule, known as “peak average molecular weight.” On appeal, the US Court of Appeals for the Federal Circuit reversed. It found the claim term indefinite, and in doing so, reviewed all aspects of the District Court’s determination de novo, including its findings of fact.
Justice Breyer, writing for a 7-2 majority, explained that this approach was in error. While the ultimate interpretation of a patent claim is still an issue of law, reviewable de novo, any underlying facts must be reviewed under the clearly erroneous standard of Rule 52(a): “When describing claim construction [in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)] we concluded that it was proper to treat the ultimate question of the proper construction of the patent as a question of law in the way that we treat document construction as a question of law. Id. at 388-91. But this does not imply an exception to Rule 52(a) for underlying factual disputes.” Slip. op. at 5.
The Court explained “how” this rule should play out, in the context of intrinsic and extrinsic evidence: “[W]hen the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent’s prosecution history), the judge’s determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo…. In some cases, however, the district court will need to look beyond the patent’s intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of a term in the relevant art…These are the ‘evidentiary underpinnings” of claim construction that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.… The district judge, after deciding the factual dispute, will then interpret the patent claim in light of the facts as he has found them. This ultimate interpretation is a legal conclusion. The appellate court can still review the district court’s ultimate construction of the claim de novo. But, to overturn the judge’s resolution of an underlying factual dispute, the Court of Appeals must find that the judge, in respect to those factual findings, has made a clear error.” Slip op. at 11-13.
As a result of this decision, it is possible parties may decide to use more expert testimony for Markman hearings (so that the “winner” on claim construction can argue for a clearly erroneous standard of appellate review for those fact issues on which the expert testified). It may also result in “satellite” appellate litigation on which standard (clearly erroneous vs. de novo) will apply to the lower court’s decision. See dissent op. at 15 (“At best, today’s holding will spawn costly…collateral litigation over the line between law and fact.”)
Gregory S. Shatan
On March 14, 2014, the U.S. government made an historic announcement: it would immediately start a process to transition control of “Key Internet Domain Name Functions” from the U.S. government to the “global multistakeholder community.” The latest milestone in this process was reached on December 1, when an eagerly awaited draft proposal for this transition was published for public comment.
This transition should be of significant interest to the business community, and particularly to intellectual property owners. This transition will shift the balance in Internet Governance, however subtly. Such a shift creates the risk that businesses and intellectual property owners will have less of a say when their concerns need to be addressed. For this reason, business and IP interests need to be vigilant and ensure that the “new world” is at least as hospitable as the current one, and that their “voice at the table” does not become muffled or drowned out by competing interests with different agendas.
The “key functions” involved in this transition are various tasks relating to the “root zone” of the Internet. The National Telecommunications and Information Administration (NTIA) oversees these functions pursuant to a contract with the Internet Corporation for Assigned Names and Numbers (ICANN).
Under the “IANA Functions Contract,” ICANN coordinates the assignment of technical Internet protocol parameters, administers certain responsibilities associated with Internet DNS root zone management, and allocates Internet numbering resources, all under U.S. government oversight. These “IANA Functions” are critical to maintaining the Internet’s “plumbing.” The IANA Contract was first entered into in 1998, and has been renewed every three years. The current contract will expire September 30, 2015.
The U.S. had always planned to transition oversight of the IANA Functions; however, no timetable had ever been set. This changed in March, and many see this as a reaction to the “Snowden revelations.” The idea of this transition has proven fairly controversial. On the one hand, some are concerned that the U.S. is somehow “giving away the Internet.” Others are concerned that ICANN, no longer accountable to the U.S., will be able to “go rogue” without fear of repercussions, and that new accountability measures must be in place. These issues need to be dealt with along with the more concrete operational concerns involved in the transition.
The NTIA asked ICANN to begin the transition by convening a multistakeholder process to develop a transition proposal. The NTIA has stated that the proposal must:
• Support and enhance the multistakeholder model of Internet policymaking and governance
• Maintain the security, stability, and resiliency of the Internet DNS
• Meet the needs and expectations of the global customers and partners of the IANA services
• Maintain the openness of the Internet
Furthermore, the proposal must have “broad community support” and must not be one that “replaces the NTIA role with a government-led or an inter-governmental organization solution.”
ICANN, with community input, developed a planning process for the transition. First, the IANA Stewardship Transition Coordination Group (ICG) was created, consisting of 30 individuals representing the interests of stakeholders from the technical community, business, civil society, governments, registries and end users.
The ICG developed a Request for Proposals (RFP), which was issued on September 9, 2014. The RFP called for separate transition proposals relating to domain names, numerical IP addresses and technical protocols. The names, numbers and protocol parameters communities each set to work.
The names community, working through ICANN, assembled the Cross Community Working Group to Develop an IANA Stewardship Transition Proposal on Naming Related Functions (CWG). The CWG consists of 19 “Members” representing different ICANN stakeholder groups, and over 100 individual “Participants.” The Commercial Stakeholder Group Member is Abelman Frayne & Schwab partner Greg Shatan, representing the interests of business, intellectual property and internet service providers worldwide.
The CWG began its work in early October, meeting weekly, with a two-day “Face-to-Face” meeting in Frankfurt in mid-November. The group also worked extensively through emails and shared documents. The ICG’s RFP had a number of explicit requirements for the CWG’s response, and several subgroups were formed to deal with specific aspects of the RFP. One subgroup was tasked with developing the proposal at the heart of the response; Greg Shatan was the chair of this subgroup. Each subgroup worked through calls, emails and shared documents as well.
On December 1, the CWG released its Draft Transition Proposal for public comment. The public comment period extends through December 22. The Draft Proposal and explanatory material maybe found at https://www.icann.org/public-comments/cwg-naming-transition-2014-12-01-en.
In preparing the proposal, the CWG looked at the various roles that the NTIA currently plays, and discussed whether and how to replace them in a post-transition world. At a high level, the transition proposal seeks to create four structures to replace the oversight roles played by the NTIA in the execution of the IANA Naming Functions. In addition, ICANN will be subject to a new contract granting it the right to perform the IANA functions and setting forth various duties and obligations of ICANN; this contract is an essential part of the proposal and should not be overlooked.
The four structures in the Draft Proposal are:
1. Contract Co. – This entity (probably formed as a non-profit corporation) exists primarily to be signatory to the contract with the IANA Functions Operator. This entity would be lightweight and have little or no staff.
2. Multistakeholder Review Team (MRT) – The MRT would be a multi-stakeholder body with formally selected representatives from all of the relevant communities (exact composition TBD). The operation of the MRT would be based on the concept of maximum public transparency. The responsibilities of the MRT will include:
a. Developing detailed contract terms
b. Making key decisions for Contract Co.
c. Conducting the IANA Functions Operator Budget Review
d. Addressing issues escalated by the Customer Standing Committee (CSC)
e. Performing other periodic administrative elements now being carried out by the NTIA
f. Managing the bidding/contracting process for the next “IANA contract”
3. Customer Standing Committee (CSC) – The CSC would consist primarily of representatives of registry operators, including ccTLD and gTLD registries. Input from the CSC would feed into and inform the work of the MRT. The CSC may include representation from other stakeholders, as well as experts. The CSC would:
a. Work with the MRT to establish Service Levels and Performance Indicators
b. Receive reports from the IANA Functions Operator including regular performance reports.
c. Review reports against service levels and escalate any significant issues to the MRT
4. Independent Appeals Panel (IAP) – This would be an independent and binding appeals panel for all IANA actions which affect the Root Zone or Root Zone WHOIS database, as well as any policy implementation actions that affect the execution of changes to the Root Zone File or Root Zone WHOIS or how relevant policies are applied. The Panel would either use an independent arbitration organization (e.g., ICDR, ICC, AAA) to supply arbitrators, or would assemble a standing list of qualified people to carry out proceedings using standard arbitral rules.
There will be 3 webinars this week to provide further information to the community regarding the proposal and next step, and to encourage community feedback. Greg Shatan will be among the presenters. The webinars will take place on:
• 3 December from 7:00 – 8:30 UTC (2:00 – 3:30 am EST)
• 4 December from 12:30 – 14:00 UTC (7:30 – 9:00 am EST)
• 4 December from 16:00 – 17:30 UTC (11:00 – 12:30 pm EST)
More information about these webinars and how to join is available at https://www.icann.org/news/announcement-3-2014-12-01-en.
For further information regarding the Draft Proposal, the IANA Transition, ICANN or Internet matters generally, please contact Greg Shatan at 212-885-9253 or email@example.com.