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Federal Circuit Treatment of ‘Commercial Success’ in Hatch-Waxman CasesIn order to establish that the commercial success factor supports a non-obviousness finding, the patentee must establish that a connection (or nexus) exists between the novel aspects of the patent claim(s) and the alleged commercial success. Id.; WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1330 (Fed. Cir. 2018). In other words, the patentee…
Hologic Wins $4.8M in Jury Verdict After Judge Determines Assignor Estoppel BarredPatent Invalidity DefensesOn July 27th, a jury verdict entered in the District of Delaware awarded $4.8 million in lost profit and reasonable royalty damages to Marlboro, MA-based medical technology company Hologic Inc. after the jury determined that two of its patents were infringed by Redwood City, CA-based medical device company Minerva Surgical. At issue in the case…
Parlor Tricks and Shell Games: How the Invisible Hand of the PTAB Supports ChallengersAfter dissenting APJ James Arpin was mysteriously and without explanation removed from the case, replaced by APJ Thomas Giannetti. Perhaps there is an innocent explanation for what happened here, but in the secretive, backroom world of the PTAB innocent explanations are becoming harder and harder to envision. And, frankly, given how the PTAB has run…
Supreme Court Petition Challenges PTAB’s Constitutionality Under the Takings ClauseAdvanced Audio’s petition for writ of certiorari notes, all five patents were filed with the U.S. Patent and Trademark Office prior to the enactment of the America Invents Act (AIA), which established the PTAB. Prior to Congressional passage of the AIA, Advanced Audioe didn’t need much litigation of its patent rights to license its patents…
Narrowly Construing the Bright-line Eligibility Prohibition Does Not Prevent Policing of Overbroad ClaimingNarrowly construing the § 101 eligibility exception for abstract ideas is not only suggested by Supreme Court guidance, but also could potentially allow for increased coherence and consistency while simultaneously serving to solicit further Supreme Court guidance on eligibility. Even if the bright-line eligibility prohibition is construed narrowly, § 101 can still serve to police…
Petition for En Banc Review Asks Federal Circuit for Clarity on Single Reference ObviousnessThe focus of the appeal is the need for clarity with respect to hopelessly irreconcilable caselaw on the issue of single reference obviousness... Decisions from the Federal Circuit have created an irreconcilable split within the Federal Circuit itself regarding the proper approach to obviousness determinations, American Vehicular Sciences argues. Indeed, many commentators (ourselves included) have…
Complaint Alleges Balenciaga Copied Design of Affordable NYC Souvenirs for Luxury KnockoffsA New York City-based souvenir and apparel firm City Merchandise filed a complaint alleging claims of copyright infringement against the American subsidiary of French luxury fashion house Balenciaga in the Southern District of New York. Unlike many other copyright suits, which typically involve infringement claims made by a high-end fashion designer against a competitor offering…
Compromise on Music Modernization Act Leads to Unconditional Support From Music Industry OrganizationsA collection of trade organizations representing music publishers and songwriters recently released a joint statement in which all announced unconditional support for S.2823, the Music Modernization Act (MMA). These organizations include SESAC, the National Music Publishers’ Association (NMPA), the Nashville Songwriters Association International (NSAI) and the Songwriters of North America (SONA). The support of the…
The CRISPR Tug of WarThe University of California (“UC”) and The Broad Institute, Inc. (“Broad”) are among the leaders in the development of CRISPR technology. Both UC and Broad filed patent applications for claims broadly drawn to CRISPR-Cas9 systems and methods of DNA editing. These parties are currently engaged in litigation over patents concerning the potentially most lucrative application…
Nintendo Files Copyright, Trademark Infringement Suit Against Operator of ROM WebsitesNintendo’s complaint targets the operator of LoveROMS.com and LoveRETRO.co who has made thousands of Nintendo titles available online for free from platforms including the Game Boy, the original Nintendo Entertainment System, Super NES, Nintendo 64 and Nintendo DS, among others. Nintendo alleges that just the top 10 games on the LoveROMs site in which Nintendo…
United Cannabis Responds: Highly enriched extracts of plant cannabinoids are inventiveI note that the ‘911 patent claims are novel and inventive because they are directed to never before made liquid formulations of highly enriched extracts of plant cannabinoids. While I believe all thirty-six claims of the ‘911 patent are valid and enforceable, as did the patent examiner who issued the patent, the number and breadth…
The Chinese “Super Trademark”: A Creative Strategy for Overseas IP ProtectionEnforcement of trademark rights in China is an ongoing issue faced by numerous corporations. Invalidating or canceling a trademark registration in the Chinese market is time-consuming and costly. The best way to defend your company’s valuable intellectual property assets is to put in place as many protections as possible. If your company owns a creative…
CAFC Upholds 101 Invalidation of Database Claims on Summary Judgment Despite BerkheimerOn Wednesday, August 15th, the Court of Appeals for the Federal Circuit issued a precedential decision in BSG Tech LLC v. BuySeasons, Inc. which upheld a decision by the district court to invalidate patent claims owned by BSG Tech as patent-ineligible under 35 U.S.C. § 101. The Federal Circuit panel of Circuit Judges Jimmie Reyna,…
Davis Wright Tremaine LLP Seeks Patent Agent or Associate Patent AttorneyThe Intellectual Property group in the Seattle office of Davis Wright Tremaine LLP is seeking a Patent Agent (preferably) or Patent Associate Attorney with more than two years’ experience in patent preparation and prosecution. The position will require development of a broad IP practice and, while the position will focus on preparation and prosecution of…
Will the USPTO use annual patent practitioner dues to stop the unauthorized practice of law?It is no secret to anyone in the industry; the unauthorized practice of law is rampant, and OED does nothing to stop it... If charging dues to patent practitioners will allow OED to put an end to the unauthorized practice of law many, if not most, practitioners would undoubtedly support the initiative. If OED plans…
Litigating Copyrights: Is Registration required to get into Court?While registration is required in order to file a lawsuit for copyright in federal court, there is currently a circuit split with regard to what part of the process must be complete in order to meet the “registration” standard. According to 17 U.S.C. §411(b), “no civil action for infringement of the copyright in any United…
Judge Rules Photographer Owned Marilyn Monroe Photo Copyright, Fair Use Moves to TrialU.S. District Judge Paul Engelmayer of the Southern District of New York recently entered an opinion and order in a copyright case involving the famed “Last Sitting” photographs of American movie star Marilyn Monroe. Although the case will continue to proceed towards a trial, Judge Engelmayer resolved various issues in the case including a determination…
Role of Preemption in Eligibility AnalysisSmartflash v. Samsung offers a set of backup arguments following Oil States. Questions Presented: Whether Administrative Patent Judges of the Patent Trial and Appeal Board (“Board”) are principal Officers of the United States who must be appointed by the President with the advice and consent of the Senate under the Appointments Clause. [DC – I…
USPTO Filing System: Expects To Be Back Online by Close-of-Business Tuesday 8/21USPTO IT employees and vendors are currently in Musk-Ludicrous mode – “working around the clock to restore the PALM database.” The Patent Application Locating and Monitoring database (PALM) is the primary USPTO tool for tracking patent prosecution progress. PALM data supports many other USPTO systems used for filing, searching, and paying patent fees. At approximately 4:30 a.m. ET on August 15, 2018, PALM experienced an…
Design Patents: Federal Circuit Jumps into COSPLAY LayeringIn re Maatita (Fed. Cir. 2018) (Dynasty Footwear) (Before DYK, REYNA, and STOLL) Ron Maatita’s design patent application covers a shoe bottom – as shown above. Note here that most of the markings in the drawing are dashed lines — for design patents these are “broken lines” that indicate “environmental structure or boundaries that form…
Patently-O Bits and Bytes by Juvan BonniRecent Headlines in the IP World: Paul Fucito: USPTO Announces 2018 Patents for Humanity Winners (Source: USPTO) Alexander Stoklosa: Ferrari Patent Applications Novel Method for Making Turbocharged Engines Sound Better (Source: Car and Driver) Jan Wolfe: Federal Circuit Tosses Wireless Patent Infringement Finding Against Apple (Source: Reuters) Danielle Kirsh: Syneo Receives Patent in China (Source: Medical Design…
Upcoming CLE EventsAlthough the USPTO is not yet requiring Continuing Legal Education hours, there is still lots to learn about the twists and turns of our patent system. I will be speaking at a few upcoming CLE-events this fall: September 27-29, 2018: I’ll be the Keynote speaker at the 2018 Annual Fall Institute on Intellectual Property Law…
Property Rights, but only To the Extent Needed By Dennis Crouch In addition to its patent law jurisprudence, the Federal Circuit also handles appeals from the US Court of Federal Claims (CFC). The CFC hears monetary claims against the U.S. Government – including breach of contract, takings, and unlicensed patent use under 28 U.S.C. Section 1498. The CFC also meets in the same…
Day Three of PTO E-Filing OutagesWe are now in Day Three of USPTO Computer System Failures: A number of USPTO online business systems remain offline. We understand the impact to our users and the frustrations that come from having such systems down unexpectedly. The USPTO is working hard to resolve the issue and we will continue to provide updates to…
En Banc: Court Rejects PTOs Narrow Reading of 1-Year Deadline for IPR Filingby Dennis Crouch In an unusual en banc footnote, the Federal Circuit has ruled that the litigation time-bar found in 35 U.S.C. § 315(b) applies even in cases where the plaintiff-patentee voluntarily dismisses the lawsuit without prejudice. Click-to-Call Tech., LP v. Ingenio, Inc. and Iancu (Fed. Cir. 2018). The statute provides: An inter partes review (IPR)…
This Self Referencing Database is Not Patent EligibleBSG Tech v. BuySeasons, Inc. (Fed. Cir. 2018) On appeal here, the Federal Circuit affirms a lower court ruling that the claims of BSG’s three asserted patents are invalid as ineligible under 35 U..S.C. § 101. U.S. Patent Nos. 6,035,294, 6,243,699, and 6,195,652. The claims relate to indexing a database according to “relative historical usage information.” Thus,…
Joinder of Inventor/Principal of Patentee to Assertion of Fees for Exceptional Case LiabilityA while back, I suggested here that defendants start thinking, early on, about joining sole-shareholders (and the like) of asset-less patentees if 285 liability was an issue. In a recent case, the district court allowed joinder of such a person, finding he was a necessary party under Rule 19. (I seriously doubt that is correct…
Teaching a Result vs Guaranteeing a ResultIn re Facebook (Fed. Cir. 2018) (nonprecedential opinion) Facebook’s U.S. Patent Application No. 13/715,636 claims a method for displaying a set of images after reshuffling or resizing the images. The Examiner rejected Claim 1 (below) as anticipated; and that rejection was affirmed by the Patent Trial and Appeal Board. Now on appeal, the Federal Circuit has…
TTAB Test: Is THE HALAL SHACK Merely Descriptive of Restaurant Services?The USPTO refused registration of the mark THE HALAL SHACK in standard character form, for "restaurant services" [HALAL disclaimed], finding the mark to be merely descriptive of the services. You may recall that, earlier this year, the BOARD found THE JOINT to be generic for "restaurant, bar and catering services." [TTABlogged here]. How do you…
Precedential No. 26: TTAB Affirms Phantom Mark Refusal of "SHAPE XXXX" for Educational JournalsThe Board affirmed a refusal to register SHAPE XXXX for educational publications and services on the ground that the term is a phantom mark that comprises more than one mark. A miscellaneous statement in the application indicated ed that "[t]he 'XXXX' in the mark denotes the unabbreviated name of a state of the United States…
WYHA? COLORGANICS for Hair Care Products Confusable With KOLORGANICS for Cosmetics, Says TTABWrapping up WYHA Week (TM) .... The Board affirmed a Section 2(d) refusal to register the mark COLORGANICS for various hair care products, finding the mark likely to cause confusion with the registered marks KOLORGANICS and KOLORGANIQUE for various make-up products. Applicant SMA argued that the K versus the C "creates a distinct and different…
WYHA? TTAB Finds "OPTIMUM BENEFITS PACKAGE" Confusable With "OPTIMUM" for Insurance Underwriting ServicesContinuing with WYHA? Week (TM) .... The Board affirmed a Section 2(d) refusal of the mark OPTIMUM BENEFITS PACKAGE for "insurance administrative services, insurance brokerage services, insurance underwriting services in the field of life, health, accident, disability and longterm care insurance" [BENEFITS PACKAGE disclaimed], finding the mark likely to cause confusion with the registered mark…
WYHA? TTAB Finds FREESTYLE for Comforters Confusable With FREESTYLE for PillowsThe Board affirmed a Section 2(d) refusal of FREESTYLE for "comforters, namely, comforters and comforter sets and comforter sets sold in a bag," finding the mark likely to cause confusion with the identical mark registered for "pillows." Applicant pointed to nine third-party registrations in class 20 for marks incorporating the word "freestyle," but the Board…
