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This week in Washington IP events, it’s quiet on Capitol Hill as both the House of Representatives and the Senate enter work periods for the week following Monday’s Presidents’ Day holiday. However, the Center for Strategic & International Studies is hosting a series of events focused on situational awareness technologies for nuclear arms, the recent Privacy Framework from NIST and advances in energy storage technologies across the automotive and electrical grid industries.

On January 6, 2020, Google submitted its brief in Google v. Oracle, kicking off the Supreme Court case that many are calling the “copyright case of the decade.” The suit pits the search engine platform controlling 93% of the worldwide search market against Oracle, the owner of the ubiquitous Java program, which submitted its response brief last week. After attempting and failing to secure the rights to Java, Google decided to cease negotiating and instead replicated 37 API packages from the copyrighted program, a decision that precipitated the years-long lawsuit.

If a recent decision denying institution of an inter partes review (IPR) is any indicator, the answer to the question above seems to be no, the Board does not routinely review a challenged patent’s prosecution history—even when the history includes a prior Board decision construing claim terms at issue in the IPR.

UPDATE: At the eleventh hour, just before the rule was to take effect, the USPTO issued revised email address requirements to address concerns outlined below from the trademark bar and public about the potential for an influx of unsolicited communications to the trademark owner’s inbox. The revised rule allows applicants represented by counsel to use any email address for the “trademark owner,” so long as it is different from the email address for the trademark owner’s attorney.

Earlier this month, the U.S. Copyright Office and the World Intellectual Property Organization (WIPO) held a joint event titled, “Copyright in the Age of Artificial Intelligence” (AI) at the Library of Congress in Washington, DC.

As an update to my posts from 2017 and 2019, it has now been more than six years since the U.S. Supreme Court’s 2014 Alice Corp. v. CLS Bank decision. Still, the IP bar awaits a clear and reliable test to determine when exactly a software (or computer-implemented) claim is patentable versus being simply an abstract idea “free to all men and reserved exclusively to none.”

As anyone who follows the United States Supreme Court knows, the Court has historically been extremely fond of taking important cases with cutting edge issues, only to dodge the real issues and address some insignificant procedural or hyper-technical issue.

What’s the secret to Intellectual Property Management? After managing hundreds of inventions, I’m going to tell you the essential trait of an excellent IP Manager, and give my four best tips for managing what is often a company’s most valuable asset. The answers might surprise you.

This week in Other Barks & Bites: The Federal Circuit issues precedential decisions in patent cases involving data centers as “regular and established place of business,” the Section 315 time-bar for PTAB proceedings and a settlement agreement rendering a summary judgment ruling moot.

In the latest stage of the Supreme Court battle between Oracle America, Inc. (Oracle) and Google, Oracle filed its opening brief with the Court on February 12.