John Fulton, Jr.

John Fulton, Jr.

Mr. Fulton is a Registered Patent Attorney and Senior Counsel with Malloy & Malloy, P.L., Board Certified in Intellectual Property Law, and rated AV Preeminent by Martindale-Hubbell. His practice includes all aspects of Intellectual Property Law with a focus on patent and trademark prosecution and related transactional matters, and patent infringement litigation. He has a Bachelor of Science in Chemical Engineering from Cleveland State University, and obtained considerable engineering experience prior to receiving his law degree, with honors, from the University of Miami School of Law. In addition to the Florida Bar, he is admitted to practice in the U.S. District Courts for the Southern District of Florida, the Middle District of Florida, and the Eastern District of Texas, and the U.S. Courts of Appeals for the Eleventh and Federal Circuits. Mr. Fulton also maintains his Registration as a Professional Engineer in the State of Florida.

Mr. Fulton is an active member of the Florida Bar, and currently serves on the Intellectual Property Law Certification Committee. He is also a member of the Federal Bar and Dade County Bar Associations, and provide Pro Bono services through the DCBA’s Small Claims Clinic and Venture Law Project initiatives. He has served as an Officer and Director of the Inventors Society of South Florida, and regularly provides complimentary “Office Hour” consultations to participants at Venture Café Miami. He has also had the honor to serve as President of his Rotary Club, the Rotary Club of Miami Brickell.

 The U.S. Supreme Court voted last week on whether or not it would hear one or more of three separate cases involving issues related to subject matter eligibility under U.S. Patent Laws.

As noted in last weeks blog, the cases in which Petitions for Certiorari were under consideration were: HP Inc. v. Berkheimer; Hikma Pharmaceuticals USA Inc. et al. v. Vanda Pharmaceuticals USA, Inc.; and Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC.

The Court denied the petitions for cert in each of the cases, without opinion.

The U.S. Supreme Court is scheduled to hold certiorari votes on Friday, January 10, to decide which cases it will or will not consider. Among them are three cases involving patent eligibility, and if the Court chooses to hear even one of these cases, it could significantly impact how Section 101 of the Patent Laws is applied for years to come.

In no particular order, the cases and questions presented are as follows:

In HP Inc. v. Berkheimer, the Court has been asked to consider whether patent eligibility is a question of law for the court based on the scope of the claims, or a questions of fact for the jury based on the state of the art at the time of the patent. 

See Petition for a Writ of Certiorari here.

Hikma Pharmaceuticals USA Inc. et al. v. Vanda Pharmaceuticals USA, Inc. present the question of whether patents that claim a method of medically treating a patient automatically satisfy Section 101 of the Patent Act, even if they apply a natural law using only routine and conventional steps.

See Petition for a Writ of Certiorari here.

Finally, in Athena Diagnostics, Inc. et al. v. Mayo Collaborative Services, LLC the Court is asked to consider whether a new and specific method of diagnosing a medical condition is patent-eligible subject matter, where the method detects a molecule never previously linked to the condition using novel man-made molecules and a series of specific chemical steps never previously performed.

For more, see Petition for a Writ of Certiorari here.

We, along with the rest of the Intellectual Property Community, will be watching closely to see what the Court decides and why, and we will provide an update in a future blog.

Wednesday, 30 October 2019 15:16

AI vs. IP

The U.S. Patent and Trademark Office (“PTO”) recently issued a second request for public comments on the impact of artificial intelligence on intellectual property laws and policies, this time with a focus on copyright and trademark related issues. 

Among the questions recently posed by the PTO:

Should a work produced by an AI algorithm or process, without the involvement of a natural person contributing expression to the resulting work, qualify as a work of authorship protectable under U.S. copyright law? Why or why not?;

Would the use of AI in trademark searching impact the registrablity of trademarks? If so, how?; and 

Are there any other AI-related issues pertinent to intellectual property rights (other than those related to patent rights) that the USPTO should examine?

You may submit comments in writing through December 16, 2019. The full list of questions is presented in the Request for Comments on Intellectual Property Protection for Artificial Intelligence Innovation, available in the Federal Register here.

The PTO previously issued a Request for Comments on Patenting Artificial Intelligence Inventions, available here, and has extended the deadline to submit comments through November 8, 2019.

Wednesday, 30 October 2019 15:10

AI vs. IP

The U.S. Patent and Trademark Office (“PTO”) recently issued a second request for public comments on the impact of artificial intelligence on intellectual property laws and policies, this time with a focus on copyright and trademark related issues.

Among the questions recently posed by the PTO:

Should a work produced by an AI algorithm or process, without the involvement of a natural person contributing expression to the resulting work, qualify as a work of authorship protectable under U.S. copyright law? Why or why not?;

Would the use of AI in trademark searching impact the registrablity of trademarks? If so, how?; and

Are there any other AI-related issues pertinent to intellectual property rights (other than those related to patent rights) that the USPTO should examine?

You may submit comments in writing through December 16, 2019. The full list of questions is presented in the Request for Comments on Intellectual Property Protection for Artificial Intelligence Innovation, available in the Federal Register here.

The PTO previously issued a Request for Comments on Patenting Artificial Intelligence Inventions, available here, and has extended the deadline to submit comments through November 8, 2019.

Wednesday, 02 January 2019 21:27

Nirvana Sues Over Smiley Face

Nirvana L.L.C. has brought suit in the U.S. District Court for the Central District of California against clothing designer Marc Jacobs International, Saks Fifth Avenue, and Neiman Marcus, along with a number of unidentified “Does” over use of the well-known smiley face logo allegedly created by the late Kurt Cobain in 1991. A copy of the Complaint can be found here.

Smiley Tees - Copy

Nirvana L.L.C. includes surviving band members Dave Grohl and Krist Novoselic, and the Kurt Cobain Estate controlled by his widow, Courtney Love.

The Complaint includes counts for Copyright Infringement and False Designation of Origin under the Lanham Act, as well as Trademark Infringement and Unfair Completion under California Common Law based on Marc Jacobs’ “Bootleg Redux Grunge” collection of clothing. For further information, see here.

It will be interesting to see the extent of protection which might be afforded to something as simple as a smiley face. :) 

Monday, 01 June 2015 15:50

“Borrowing” A Stairway To Heaven?

Heirs of the estate of Randy Craig Wolfe, aka Randy California, lead guitarist, singer and songwriter for the band Spirit, have filed suit in the U.S. District Court for the Eastern District of Pennsylvania alleging that key portions of Led Zeppelin’s “Stairway To Heaven”, arguably the band’s biggest hit, are actually from the California penned “Taurus”, a song he composed while just 16 years old.

Tuesday, 08 November 2011 21:32

FEDERAL CIRCUIT REJECTS "CAPABILITY" ARGUMENT

In a precedential opinion issued this past Friday, the United States Court of Appeals for the Federal Circuit rejected arguments that an accused device merely needs to be "capable" of being configured or programmed to perform a claimed function in order for patent infringement to occur.

Monday, 22 August 2011 21:22

FEDERAL CIRCUIT RAISES THE ON-SALE BAR

Today, the U.S. Court of Appeals for the Federal Circuit issued a precedential opinion addressing the "on-sale bar" under 35 U.S.C. §102(b). Section 102(b) provides that:

The U.S. District Court for the Southern District of Florida is one of only fourteen federal districts recently selected to participate in a 10 year pilot program intended to promote expertise among U.S. district judges in the specialized field of patent law.

Tuesday, 14 June 2011 21:16

SUPREME COURT RULES AGAINST MICROSOFT

In a unanimous decision delivered by Justice Sonia Sotomayor, the Supreme Court held that an invalidity defense must be proven by “clear and convincing evidence," likely ending Microsoft's efforts to avoid a $200 million plus damages award.

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