Dr. Adli believes that Mr. Ahn  is uniquely qualified to assist the firm in becoming one of the preeminent international law firms specializing in the fields of Litigation, Intellectual Property and Business litigation and transaction, enforcement and licensing of patents, trademarks, and copyrights.

James Ahn  joins the firm as an associate with Adli Law Group P.C.’s Los Angeles office.

Mr. Ahn is a registered patent attorney in Adli Law Group’s litigation department where he focuses on intellectual property matters.  Mr. Ahn has significant experience in all aspects of patent litigation from inception through trial.  Mr. Ahn has litigated patent infringement lawsuits in federal courts involving various technologies, including methods of using prostaglandins for stimulating hair growth, secure systems for generating internet postage, methods of using resin absorbent material for lining underground pipelines, and distributed systems for hosting websites.

Prior to joining Adli Law Group, Mr. Ahn was a patent litigator with Graves & Shaw, LLP, an intellectual property litigation boutique firm in Los Angeles.  During his tenure with the firm, Mr. Ahn was a member of the trial team that successfully defended Stamps.com at a three-week trial, securing a jury verdict of non-infringement with respect to all asserted claims of all asserted patents.

Obama cited that the law would stimulate U.S. businesses by giving the USPTO the necessary funding to speed up the patent process. The America Invents Act makes the USPTO more self-sufficient by giving it the authority to set its own fees, which proponents say will allow the USPTO hiring of more patent examiners to reduce the huge backlog of pending patent applications.
“Right now, there are about 700,000 applications that haven’t even been opened yet. These are jobs and businesses of the future just waiting to be created,… [S]omewhere in that stack of applications could be the next technological breakthrough” Obama stated.

The America Invents Act makes a notable and significant change to the U.S. Patent law in that it turns the U.S patent system from a first-to-invent system to a first-to-file patent system, which puts the U.S. in line with the patent laws of most foreign countries. As its name suggests, the first-to-file system rewards the first inventor to file a patent application as opposed to the first inventor to conceive the invention. Large corporation such as Microsoft and Apple have been strong supporters of the Act, which they say provides harmonization and improves America’s ability to compete internationally. However, some claim that the Act puts small business at a disadvantage, most likely because their level of resources and sophistication may not allow them to get patent applications on file as fast as larger corporations.

Whether or not one trademark infringes upon another depends on whether there is a likelihood that consumers will find the marks confusingly similar. In a trademark infringement lawsuit, the likelihood of confusion is determined by examining factors such as (1) the similarity of the marks; (2) relatedness of the companies’ products; (3) the strength of the plaintiff’s trademark; (4) the channels by which the goods will be marketed; (5) the degree of care exercised by relevant purchasers in selecting such goods; (6) the accused infringer’s intent in selecting its mark; (7) evidence of actual consumer confusion; and (8) the likelihood of expansion of either company’s product lines, such that they might come into conflict in the future.

Based on these factors, it should be obvious that simply adding “The” to a trademark does not create an acceptable new mark, because consumers seeing two similar marks on similar goods likely would be confused as to whether the same company was using both marks. For example, if you saw soda bottles marked “The Pepsi”, wouldn’t you assume that this soda was made by the same company that makes Pepsi? When marks are virtually identical, this factor weighs heavily in favor of a finding of infringement. Likewise, changing the spelling to “Pipse” would probably not be acceptable, especially for a beverage product. This is why, before you pick a name or trademark for a new business, you should first contact a lawyer who can search for existing trademarks to make sure that your proposed mark is not confusingly similar to someone else’s mark.

First, a trademark (sometimes also called a service mark) is usually a word or symbol used to identify and distinguish the goods or services of one person or company from another. Familiar examples would be “Ford” for the Ford Motor Company, or the M-shaped “golden arches” of McDonald’s. Trademark rights arise primarily from use of the mark in commerce; such use may give rise to what is called a “common law” trademark, but you can obtain far superior rights and protection by registering your mark with the United States Patent & Trademark Office (or, to a lesser extent, with the California Secretary of State’s office).

While a trademark registration serves to protect exclusive rights to use a particular name or mark in association with goods or services, a copyright registration serves to protect rights in original works of authorship fixed in any tangible medium of expression, from which they can be perceived, reproduced, or communicated. In plain English, this means that, to register a copyright in a creative work, the work must have at least some minimal amount of originality, and it must be expressed in some tangible form — be it in written words, visual art or design, etc. Unlike trademarks, copyrights in the United States are almost exclusively a matter of federal law, with a few obscure exceptions. Copyright registrations are obtained from the U.S. Copyright Office.

Lastly, a patent registration will protect your right as an inventor to exclude others, for a limited time, from making, using, or selling your invention (be it a device, a process, a chemical compound, etc.) in the United States or importing the invention into the United States. If you own a patent, you essentially have a temporary monopoly over the subject of the patent. For example, usually for a period of several years, a new drug will be offered exclusively by the company that developed it, before eventually the patent expires and “generic” versions of that drug begin to appear in stores. Patent registrations, like copyright registrations, are obtained from the U.S. federal government, specifically the United States Patent and Trademark Office (which also, as the name implies, issues federal trademark registrations).

Whether you own your own business, create your own artistic works, or develop new inventions at home (or all three!), there are concrete steps you can take to protect your intellectual property and safeguard the results of your hard work, and the first step is knowing what kind of registration you should seek.

A.                First-Inventor-to-File System

Unlike most other countries, the U.S. has a “first-to-invent” system that protects the first inventor.  It allows the applicant of a later-filed patent application to antedate or “swear behind” a prior art reference or another inventor by proving that the applicant conceived of the invention before the effective date of the prior art reference or the conception of the invention by the other inventor.  In contrast, the “first-to-file” system in most other countries simply awards the patent to the applicant with the earliest filing date.

The Act adopts a “first-inventor-to-file” system, with a twist.  Unlike other “first-to-file” systems, where an earlier disclosure of the invention serves as an absolute bar to patentability, the Act maintains the one year grace period from the current version of Section 102(b),[1] but only for disclosures made by an inventor or another person who obtained the disclosed subject matter from him, and subsequent disclosures by others.  So the Act does not completely harmonize U.S. and foreign patent law.

The “first-inventor-to-file” system eliminates patent interferences, a type of proceeding before the Patent & Trademark Office (“PTO”) to determine which among multiple applicants claiming the same invention is the first to invent the invention.  Instead, the Act creates a more limited “derivation” proceeding, whereby an applicant in a later application petitions against an earlier application that (1) names an inventor who had “derived” the claimed invention from an inventor named in the later application, and (2) was filed without authorization (presumably, by either the applicant or the inventor named in the later application).

A derivation petition “shall be supported by substantial evidence,” a requirement that may prove difficult to meet in practice.  In a patent interference, an earlier inventor only needs to show that he was the first to conceive of the claimed invention, and that he worked diligently to reduce the invention to practice.  Both aspects can be proven by evidence within his possession, e.g., schematics, blueprints, laboratory notebooks, etc.

However, in a derivation proceeding, the earlier inventor must prove that someone else derived the claimed invention from him.  If an invention is stolen from the original inventor and changes hands before someone else files a patent application on the invention, the link to the original inventor may be nearly impossible to prove, and the “substantial evidence” required to do so would most likely not be within the original inventor’s possession.  This places an onus on patentees and applicants to better safeguard their inventions, and to promptly apply for patent protection.

B.                 Changes Affecting Litigation

The Act changes U.S. patent law in other ways that affect patent litigation.

1.                  Broader On-Sale Bar

While the Act retains the one year grace period from Section 102(b), it also broadens two categories of invalidating prior art in that section, commonly referred to as the “on-sale bar.”  In the current version of Section 102(b), a public use or sale of an invention more than a year prior to the filing of a patent application on the invention invalidates the resulting patent only if such use or sale occurs within the U.S.  The Act broadens the Section 102(b) “on-sale bar” to include a public use or sale of the invention in a foreign country as invalidating prior art.

2.                  No More Best Mode Defense

The Act retains the “best mode” requirement, which requires an inventor to disclose the “best mode” for practicing the claimed invention.  However, under the Act, the failure to disclose the “best mode” no longer serves as a basis to invalidate the patent.

In practice, a defendant may spend less time deposing an inventor in an attempt to get the inventor to admit that he has an optimal way of practicing or implementing the claimed invention that is not disclosed in the corresponding patent.

3.                  Expansion of Prior Commercial Use Defense

The prior commercial use defense currently applies only to business method patents.  The Act extends that defense to all patents, except those on inventions owned or subject to an obligation of assignment to a public or non-profit university, or a related technology transfer organization.

The defense may be asserted by a defendant that has in good faith made commercial use of a patented invention at least one year prior to the earlier of (a) the filing date of the asserted patent, or (b) the date on which the patented invention was disclosed to the public.

4.                  Advice of Counsel / Willful Infringement

The Act codifies the Federal Circuit’s 2007 decision in Seagate that held that the failure by an accused infringer to obtain the advice of counsel does not give rise to an adverse inference with respect to willful infringement.

5.                  False Marking Plaintiff Must Show “Competitive Injury”

Currently, any person may bring an action against a defendant for false marking, and the penalty awarded is split evenly between the plaintiff and the U.S. government.  In the past few years, this has allowed a frenzy of lawsuits against patentees who had inadvertently neglected to remove the marking of expired patents on products or product packaging.  The Act remedies this by requiring a plaintiff bringing a false marking case to show competitive injury resulting from the alleged false marking.

6.                  Suing Multiple Defendants on the Same Patent

Pursuant to the Federal Rules of Civil Procedure, one plaintiff’s claims against multiple defendants may only be brought in a single lawsuit only if (a) “any right to relief is asserted against them jointly, severally, or … aris[es] out of the same transaction [or] occurrence,” and (b) there is a “question of law or fact common to all defendants.”

Although both requirements apply to patent infringement actions, it is quite prevalent for a patentee to sue multiple accused infringers on the same patent in one lawsuit, even though their respective infringing activities are not related.  The Act reaffirms the above requirements, and expressly mandates that “accused infringers may not be jointed in one action as defendants … based solely on allegations that they each have infringed the patent or patents in suit.”

This affects all patentees, especially non-practicing entities, i.e., entities that owns one or more patents but do not practice the patented inventions (sometimes pejoratively referred to as “patent trolls”), as these entities frequently sue many defendants in a single case to facilitate management of pending patent litigation.  Indeed, Bloomberg has recently reported a ten-fold increase in patent infringement lawsuits filed against multiple defendants in anticipation of the Act’s enactment, with about half of the 31 lawsuits each targeting more than 10 defendants.[2]

C.                New Opportunities for Challenging Patents and Patent Applications

The Act also introduces new opportunities for challenging patents and patent applications before the PTO.  These include:

1.                  Expanded Period for Third Party Prior Art Submission Prior to Issuance

Currently, a third party may only submit limited prior art references relevant to a pending published patent application within a narrow time frame.  The prior art references are limited to “patents and publications,” and must be submitted within two months after the pending patent application is published.

The Act adds statements by the patent owner in proceedings before a federal court or the PTO taking a position on the scope of any claim of a particular patent as a category of prior art references that may be submitted to the PTO, and expands the period for submitting any prior art references.

2.                  Post-Grant Review

Currently, the only way to challenge the validity of a patent at the PTO is to file a request for reexamination.  The Act adds another mechanism whereby a third party may petition for a post-grant review of a patent within nine months after the patent is granted on any ground relating to the invalidity of the patent or any claim thereof.

The Act also creates a transitional post-grant review proceeding to review the validity of certain business method patents relating to financial services, which can only be initiated by those who have been charged with or sued for infringement of a covered business patent.

3.                  Inter Partes Review

The Act also replaces inter partes reexaminations with an inter partes review procedure that a third party may initiate nine months after a patent is granted, or after the completion of any post-grant review.  An inter partes review is limited to grounds under Sections 102 and 103 — i.e., that the patented invention lacks novelty or is obvious in view of the prior art — and must be based on prior art patents or printed publications.

*          *          *

The Act limits any subsequent challenges to the validity of a patent by a party who has petitioned for either a post-grant review or an inter partes review of the patent in cases where such petition results in a final written decision affirming the validity of the patent.  In such cases, the petitioner is stopped from asserting, in any subsequent proceedings before the PTO, a federal court, or the International Trade Commission (“ITC”), that the patent is invalid on any ground that the petitioner raised or reasonably could have raised in the petition for the post-grant review or the inter partes review.  Compared to the current inter partes reexamination process, the Act extends the estoppel to ITC investigations as well.

D.                Miscellaneous

1.                  Assignee as Applicant

Section 118 now severely limits the circumstances under which an assignee can apply for a patent.  An assignee can only do so if “an inventor refuses to execute the patent application or cannot be found or reached after diligent effort,” and then only “on behalf of and as agent for the inventor … to preserve the rights of the parties or to prevent irreparable damage.”  The Act revises Section 118 to allow an assignee to apply for a patent directly without consideration or proof of any of these circumstances.

2.                  Prioritized Examination Fee

The Act introduces a $4,800 fee (in addition to the regular filing and other PTO fees) for prioritized examinations of non-provisional applications for utility or plant patents.  (There is already has expedited examination of a design patent application for a $900 fee.)  The number of prioritized examinations is initially limited to 10,000 per fiscal year.  There are no details yet on the requirements of or the time saved by a prioritized examination.

On November 2, 2009, Plaintiff e.Digital Corporation (“e.Digital”) filed this lawsuit for patent infringement against twenty nine companies including Imation Corporation (which Adli Law represents), HTC Corporation, Canon, Inc., Nokia, Inc., etc. Plaintiff e.Digital alleges that the defendants’ digital camera devices infringe certain claims of its U.S. Patent No. 5,491,774 (“the ’774 Patent”) and 5,742,737 (“the ’737 Patent”).

This claim construction dispute centered on a single claim construction issue, i.e., whether the term “flash memory” recited in the asserted claims means the “sole memory of the received processed sound electrical signals.” Defendants contended that since all the accused devices used both random-access memory (“RAM”) and flash memory for the received processed sound, rather than flash as the sole memory, none of the accused products is covered by the asserted claims. In light of the Court’s decision, defendants expect that the case will be dismissed by stipulation or through summary judgment.

This change harmonizes the patent grant priority system within the United States with international norms.  These reforms would also allow the U.S. Patent and Trademark Office to retain the fees collected from filings.  This measure is targeted to reduce the backlog of hundreds of thousands of patent applications awaiting approval.   Further, the change to a first-to-file system is also aimed at improving judicial economy, as the determination of inventorship based on priority is frequently challenged in the courts.

Congress will now work to integrate the two versions of the bill before taking a final vote.

­­­­­­­On May 31, 2011, the Supreme Court issued its opinion in Global-Tech Appliances, Inc. v. SEB S.A., No. 10-6, holding that liability for induced patent infringement under 35 U.S.C. § 271(b) requires knowledge that the induced acts constitute patent infringement. At issue in this case was the requisite knowledge required to be liable for induced infringement.

In its opinion, the Court first held that inducement of infringement, like contributory infringement, requires that the accused inducer know that the third party’s conduct constitutes an infringement.  The Court then discussed the ambiguity in 35 U. S. C. § 271(b) as to what intention was required for infringement and reviewed its own precedents to determine the appropriate standard.  In Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U. S. 476 (1964) (Aro II), the Court held that knowledge was required for liability in cases of contributory infringement. The Court reasoned that inducement has common legal roots with contributory infringement, so § 271(b) should require knowledge as does § 271(c).  The Court also referenced its opinion in Grokster, an induced copyright infringement case, where it held that liability for inducement is premised “on purposeful, culpable expression and conduct.” Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U. S. 913, 937 (2005). Based on the reasoning that inducement of infringement and contributory infringement have the same roots, the Court expressly rejected the “deliberate indifference” standard utilized by the Federal Circuit and instead adopted the “willful blindness” standard from criminal law. Under this standard, a defendant is considered willfully blind if he or she “subjectively believe[s] there is a high probability that a fact exists” and “take[s] deliberate actions to avoid learning of that fact.”

The Court affirmed the Federal Circuit’s conclusion that petitioner Pentalpha Enterprises, Ltd. induced others to infringe on SEB’s patent on deep-fryer technology.  Pentalpha purchased a fryer containing SEB’s technology in Hong Kong (which did not have U.S. patent markings), copied all but the cosmetic details, and retained a patent attorney to conduct a right-to-use study without disclosing that it had copied its design.  Pentalpha then sold these deep fryers to Sunbeam Products, Inc., Fingerhut Corp., and Montgomery Ward & Co., who then redistributed the fryers in the U.S. under their respective trademarks. Applying the willful blindness standard, the Court held that the evidence was sufficient to determine that Pentalpha induced infringement under the appropriate standard of review.

This case clarifies the legal standard for proving knowledge of the third party’s infringement in cases claiming induced infringement under 35 U. S. C. § 271(b). By adopting the two-part willful blindness standard, the Court raised the burden on plaintiffs because willful blindness is a heightened standard compared to the deliberate indifference previously applied by the Federal Circuit.

Mr. Tseng’s practice is primarily focused on patent litigation. Prior to joining Adli Law, Mr. Tseng worked at Paul Hastings, a large international IP firm, where he represented clients in both patent litigation and prosecution. Mr. Tseng has represented clients in Intellectual Property litigation before federal courts, including the U.S. District Court for the Eastern District of Texas and District of Delaware, on a variety of technologies, such as plastic molding techniques, internet lead generation, audio/video encoding circuits, flash memory devices, web-based gaming, telecommunications as well as mobile handsets and handset operations. In addition, Mr. Tseng was previously a consultant for a Chicago-based entity specializing in patent counseling and strategic intellectual property planning.

Mr. Tseng received his B.S.E. in computer engineering from the University of Michigan and his J.D. from Rutgers University, where he was selected as a Marshall Brennan Fellow. He is a member of the state bar of California and is admitted to practice before the U.S. Patent and Trademark Office.

Mr. Tseng said in a statement: “I decided to join Adli Law for an opportunity to litigate sophisticated patent cases for international clients with a collegial group of attorneys.”