Legal News

by Dennis Crouch Nidec Motor v. Zhongshan Broad Ocean Motor (Fed. Cir. 2017) Serial Filings: Important statement here from the Court against allowing a PTAB IPR patent challenger to continue to file additional IPR petitions after the 1-year deadline of 315(b) via the joinder process of 315(c); and also against stacking of PTAB Board to achieve particular results on rehearing. On appeal in this case is the PTAB's cancellation of the claims of Nidec's Patent No. 7,626,349 at the conclusion of an IPR proceedings. The patent covers an HVAC with an improved motor controller that uses sinus-wave powering (rather than square-waves) for [...]

In an enervating, yet precedential decision, the Board sustained an opposition to registration of the mark MEDICAL EXTRUSION TECHNOLOGIES, in standard character form, for polyurethanes for use in the manufacture of medical devices, finding applicant's evidence inadequate to support its Section 2(f) claim of acquired distinctiveness for this highly descriptive term. Apollo Medical Extrusion Technologies, Inc. v. Medical Extrusion Technologies, Inc., Opposition No. 91219435 (August 18, 2017) [precedential] (Opinion by Judge Jeffrey T. Quinn).By seeking registration under Section 2(f) of the Trademark Act, applicant conceded that its mark was not inherently distinctive. An applicant who resorts to Section 2(f) bears [...]

by Dennis Crouch In my view, a potential critical historical question in Oil States is whether the English Privy Council was empowered to revoke patents back in 1791. If we begin with recognizing that the Statute of Monopolies indicated that patents should be tried by the courts, one explanatory theory for the Privy Council's power is that English patent rights always included a caveat that permitted patents to be cancelled by the Council as an alternative avenue. Certainly, the Privy Council was active in these proceedings prior to 1779. A 1904 treatise titled The English Patent System (by William [...]

The TTAB affirmed three refusals to register the design shown below, comprising a "three-dimensional cylindrical cast of female breasts and torso," for associational, educational, and fund-raising services related to breast cancer awareness, finding that (1) applicant's specimens of use fail to show the applied-for-mark in use with the recited services, (2) the design fails to function as a service mark, and (3) assuming arguendo that the first two refusals were overcome, it constitutes nondistinctive trade dress that lacks acquired distinctiveness. In re Keep A Breast Foundation, Serial No. 85316199 (August 7, 2017) [precedential] (Opinion by Judge Peter W. Cataldo). Specimens [...]

by Dennis Crouch Oil States Energy Services, LLC, v. Greene's Energy Group, LLC., now pending before the Supreme Court raises one important question: Issue: Whether inter partes review … violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. In June 2017, the Supreme Court granted certiorari and briefing is expected to continue through November 2017. One amicus group did not wait till their filing deadline but instead has preemptively filed a brief “in support of neither party” even before any of the party briefs have been filed. Professor Tomás Gómez-Arostegui has focused on IP legal history for [...]

by Dennis Crouch Many of us have been criticizing the Federal Circuit new proclivity to issue no-opinion judgment – particularly in patent cases stemming from the Patent Trial and Appeal Board. The Court appears to be experimenting with a new method – short non-precedential decisions. I highlight two decisions released on August 17: Gold Standard Instruments v. Endodontics, Appeal No. 16-2597 (Fed. Cir. 2017) (4-pages, affirming PTAB) Cronos Tech. v. Expedia, Appeal No., 16-2528 (Fed. Cir. 2017) (3-pages, affirming District Court) In Gold Standard, the PTAB had found all claims of the challenged patent obvious. IPR2015-00632, U.S. Patent No. 8,727,773. That decision [...]

Georgetown Rail v. Holland (Fed. Cir. 2017) In a prior post, I noted that the Federal Circuit initially released this appellate decision under seal but requested that the parties show cause as to why it should remain under seal. After receiving no objection from the parties, the court has now unsealed the decision. The case centers on Georgetown's U.S. Patent No. 7,616,329 which covers a method for inspection of railroad tie-plates and particularly includes automating the examination of misaligned tie plates. In 2012 Union Pacific set up a head-to-head challenge between Georgetown and Holland. Holland got the business then Georgetown [...]

The USPTO refused registration of the mark UHAI for "Hair care products, namely, shampoo, conditioner, oil, gel, foam, spray, styling custard, hair regrowth kits comprised primarily non-medicated exfoliating scrub, scalp serum and temple balm for promoting hair growth," finding the mark likely to cause confusion with the registered mark LIFE FOR HAIR & Design (shown below), for "hair care product, namely, shampoo used to strengthen the hair [HAIR disclaimed]." Applicant contended that the Examining Attorney failed to prove that Swahili is a "common modern" language in this country, and thus failed to show that customers are likely to be confused [...]

The Federal Circuit has denied Prism Tech‘s petition for en banc rehearing on the question of deference to district court factual-findings that underlay a decision on patent eligibility. Prism had raised the following question: This case warrants en banc review because it involves the precedent-setting question of whether this Court should apply a clear error standard of review to a district court's underlying factual findings regarding patent eligibility under 35 U.S.C. § 101. In this case, the District Court found the Asserted Claims patent eligible under § 101 and made several factual findings in support thereof. On appeal, the Panel characterized [...]

Arcor S.A.I.C. opposed an application to register the mark BON BON in the design form shown below, for "Confectionery made of sugar, namely, candy, sweets, caramels" [BON BON disclaimed] in view of its registered mark BON O BON in standard character form, for "Chocolates, pastries filled with sweet fillings, alfojores, and wafers." Applicant "ROT FRONT" argued that consumers will distinguish the marks due to the "extreme weakness of the term 'BON BON.'" How do you think this came out? Arcor S.A.I.C. v. "ROT FRONT" Open-Type Joint Stock Co., Opposition No. 91222153 (August 15, 2017) [not precedential]. (Opinion by Judge Peter [...]

Filed: August 17, 2017 as 2:2017at00849 Cause Of Action: Copyright Infringement [...]

Filed: August 17, 2017 as 2:2017cv01716 Plaintiff: McGraw-Hill Global [...]

A blog about the USPTO from the Department of Commerce Small businesses and independent inventors both serve a vital role in our nation's economy. And, helping those with limited resources is an important goal of the United States Patent and Trademark Office (USPTO). The USPTO's Patent Pro Bono Program provides free legal assistance to financially under-resourced inventors and small businesses interested in securing patent protection for their inventions. Inventors then bring their inventions to market – helping to grow the economy and turn their dreams into reality. John Kirkpatrick, Associate Pro Bono Coordinator and [...]

By Jason Rantanen One of my current projects is to create a transparent and user-friendly database of information about Federal Circuit decisions–particularly, its patent law decisions–with a structure that's useful for empirical researchers and other people who write about the court. If folks are going to throw around numbers about the court, my hope is that they have some grounding in a relatively clear and consistent methodology. My goal in creating this database is to focus on information that's of interest to researchers and commentators rather than to create another database for online legal research. While Westlaw, Lexis, and the various [...]

Amgen v. Hospira (Fed. Cir. 2017) The dispute here falls under the Biologics Price Competition and Innovation Act of 2009 (BPCIA), which can be loosely described the Hatch-Waxman equivalent for large-molecule biologics. Particularly, BPCIA creates an abbreviated approval pathway for products that are “biosimilar” to an already FDA-approved biological drug product. Unfortunately, the actual statute is a complete mess – being both unduly complex and unduly vague. That said, the Supreme Court used nice words in its recent decision: “The BPCIA sets forth a carefully calibrated scheme for preparing to adjudicate, and then adjudicating, claims of infringement.” Sandoz, Inc. v. [...]

In a six-page opinion, the Board affirmed a Section 2(e)(1) refusal of GOLDEN DOODLE, finding the proposed mark merely descriptive of "On-line retail gift shops; On-line retail store services featuring apparel and accessories; Retail store services featuring apparel, accessories and gifts." Applicant acknowledged that among the many dogs represented in its designs is the "goldendoodle," a cross between poodle and a golden retriever. In re GoldenDoodle LLC, Serial No. 86717500 (August 11, 2017) [not precedential] (Opinion by Judge Albert Zervas).The evidence submitted by Examining Attorney Tracy Whittaker-Brown established that the goods offered in applicant's retail stores may feature goods with [...]

Visual Memory v. NVIDIA (Fed. Cir. 2017) In a split opinion, the Federal Circuit has sided with the patentee and reversed a the district court judgment that Visual Memory's patent claims improperly encompass an abstract idea. The opinion filed by Judge Stoll was joined by Judge O'Malley. Judge Hughes wrote in dissent. Claim 1 of asserted U.S. Patent No. 5,953,740 is directed to a “computer memory system” that includes a “main memory” and also a “cache” both connected to a bus that can then be connected to a processor. The inventive element, is that the cache's operation is programmable [...]

Steve Brachmann: Is Being Called A ‘Patent Troll' Defamatory? Ana Swanson: Trump Administration Goes After China Over Intellectual Property Malathi Nayak: Cost Of Patent Infringement Litigation Falling Sharply Malathi Nayak: Inventors Torch Patents Outside PTO, Decry Review Process Debra Weiss: Patent Lawsuits Drop 21 Percent In The Eastern District Of Texas James Kachmar: Ninth Circuit Holds That “Reverse Confusion” Need Not Be Pled With Specificity. Get a Job doing Patent Law Google Duane Morris Viering, Jentschura & Partner Schwegman Lundberg & Woessner Finch & Maloney [...]

The Board affirmed a refusal to register, on the Supplemental Register, the product configuration mark shown below, for "printed paper labels; paper identification tags; printed paper labels; adhesive labels; paper die cut shapes; paper labels; paper tags; placards of paper or cardboard; printed paper labels; coupons," finding that "the changeable elements in Applicant's proposed mark result in multiple marks that cannot be protected in a single registration." In re MPT, Inc., Serial No. 86316207 (August 9, 2017) [not precedential] (Opinion by Judge Cynthia C. Lynch).The supposed mark consists of "four rounded, convex corners and the call-out indicator of a generally [...]

Although finding that the term BROE is primarily a surname, and that the stylization shown below does not make the mark inherently distinctive, the Board reversed this Section 2(e)(4) refusal because applicant established acquired distinctiveness under Section 2(f). In re Broe Management Company, LLC d/b/a The Broe Group, Serial No. 86715987 (August 11, 2017) [not precedential] (Opinion by Judge Michael B. Adlin).Surname?: The evidence established that applicant is named for its founder and chief executive officer, Pat Broe. On its website, applicant describes itself as a "family-owned business." Negative dictionary evidence indicated that "broe" has no non-surname meaning and a [...]