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"That's the way the cookie crumbles", a panel of judges from the US Court of Appeals for the Third Circuit again concluded in rejecting trade dress protection for the well-known Pocky cookie design. However, in a revised decision following a rehearing request, the panel clarified its initial analysis on trade dress functionality, providing a fuller explanation of its reasoning which may soothe trade dress advocates.
Congress recently enacted the Trademark Modernisation Act (TMA) 2020 as part of the Consolidated Appropriations Act 2021. The TMA amends the Trademark Act 1946 – also known as the 'Lanham Act' – and makes significant changes to trademark law by clarifying the burden for trademark owners seeking injunctive relief and providing new mechanisms for challenging applications and registrations on non-use grounds.
The Consolidated Appropriations Act, which was enacted on 27 December 2020, requires drug manufacturers and licence holders to market biologic drugs and disclose all patents that cover their products to the Food and Drug Administration. By increasing transparency, the act aims to force manufacturers to conform to rules which have proven successful in promoting the development and use of small-molecule generic drugs.
Since the COVID-19 pandemic started, some new trends have emerged among non-profits looking to maximise their brand value. This article outlines strategies that non-profits should consider when working to maximise brand value, conduct a successful rebrand or monitor the use of copyrighted materials.
After years of similar pending legislation, Congress passed the Copyright Alternative in Small-Claims Enforcement (CASE) Act, buried deep in the thousands of pages of the COVID-19 relief bill. The CASE Act is being welcomed with mixed reactions, with some copyright owners excited for an alternative to federal litigation, but also concerned about the opt-out option. Similarly, others who frequently receive copyright claims view this with hesitancy.
Companies, and their lawyers, go to great lengths to protect their intellectual property, as they should. But a new trend may have emerged – the granting of a free licence, for a limited duration, to help with the COVID-19 battle. Granting such a licence is a bold step. Companies should consider the issues relevant to them and enlist counsel as appropriate.
The Supreme Court has unloaded its cannons on the Copyright Clarification Act, holding that Congress lacks the authority to abrogate states' immunity from copyright infringement suits. The unanimous decision found that the court's previous holding in a case rejecting the sovereign immunity abrogation clause in the nearly identical Patent Remedy Act compelled a similar result. This finding effectively eliminates copyright infringement actions against states.
In today's digital world, application programming interfaces (APIs) play a rapidly growing role in meeting the need for interconnectivity. As society grows increasingly reliant on remote access for work, APIs will continue to serve as an essential facilitator of business and everyday life. To that end, every business must consider how best to protect this valuable resource. This article discusses several ways in which legal issues surrounding APIs arise and how businesses can better protect their APIs.
As the COVID-19 pandemic continues, scammers are seeking to capitalise on public fear and uncertainty, requiring brand owners to be ever vigilant in monitoring and protecting their intellectual property. This article highlights some of the scams seen during the pandemic and outlines what action brand owners can take. These actions may prove particularly important for organisations working on the front line in the fight to flatten the COVID-19 curve.
The United States Patent and Trademark Office recently enacted a rule that increases numerous fees for filing trademark applications, maintaining trademark registrations and filing oppositions and cancellations before the Trademark Trial and Appeal Board. Brand owners considering filing new trademark applications, and those with upcoming deadlines, should proceed with filings now to avoid incurring the increased government fees that will take effect on 2 January 2021.
Arizona, Montana, New Jersey and South Dakota have voted to legalise recreational marijuana use for individuals aged 21 years and older and Mississippi has voted to allow prescribed medical marijuana for people with certain conditions. While the specific regulatory frameworks concerning cannabis in these states have yet to be determined, companies involved in the cannabis industry should begin thinking now about what requirements exist to secure trademark rights for cannabis-related goods and services.
With people encouraged to stay home and retail stores closing across the country due to COVID-19, Amazon sales have surged. In this climate of increased sales, IP rights owners must be especially active in enforcing their rights against Amazon sellers of infringing products. Fortunately, Amazon provides numerous tools that rights owners can use to monitor for infringement and seek the removal of infringing listings.
Can inter partes review petitions be denied as cumulative of previously presented art and arguments?USA | 09 November 2020
In March 2020 the Precedential Opinion Panel of the Patent Trial and Appeal Board (PTAB) designated as precedential an opinion which sets out a two-part inquiry for determining when the PTAB can deny institution of inter partes review proceedings under 35 US Code 325(d) as duplicative of art and arguments previously presented in patent prosecution. The PTAB director's determination to institute or deny an inter partes review is non-appealable.
Protecting consumers and company brand identity is more important than ever as counterfeit products surge in the shadow of the COVID-19 outbreak. In this time of social distancing, consumers are beginning to rely more heavily on e-commerce platforms to purchase both essential and non-essential products. This article outlines some of the strategies that companies could use to protect their customers and brand during the pandemic.
Despite the implementation of several programmes in recent years, the traffic of counterfeit goods remains a problem for Amazon. As such, it recently announced the launch of a new Counterfeit Crimes Unit in an effort to stifle the trade of counterfeit goods on its international marketplace. The unit is a global team that will use Amazon's own internal data, third-party payment service providers and on-the-ground assets to identify bad actors and bring them to justice.
Products involving CBD and hemp seeds have been flooding the US market and businesses are seeking to protect their brands in connection with products in this emerging market, given the legalisation of various forms of marijuana in individual states. Where federal or state registration is not legally obtainable with regard to various goods or services, users may be able to obtain common law rights to cannabis-related trademarks if they are in use.
The Supreme Court recently ruled by a seven-to-two majority that determinations by the Patent Trial and Appeal Board of whether to apply the time bar of 35 US Code 315(b) to inter partes review proceedings are not appealable. In so doing, the Supreme Court effectively abrogated the Federal Circuit's en banc decision that such determinations are appealable.
Congress is taking action after recognising the growing problem of counterfeit and unregulated products being sold through online marketplaces and the associated safety concerns. This article provides a high-level overview of the proliferation of counterfeits on online marketplaces and summarises three pending bipartisan bills and their stated goals.
A recent Supreme Court decision may seem like it boiled down to an esoteric argument over the correct interpretation of a series of cases decided in the 19th century – and it did – but the ramifications of the decision will be felt in 2020 and beyond. The court, by a slim five-to-four majority, held that the annotations in Georgia's official code are not copyrightable.
In April 2020 the Supreme Court ruled that a plaintiff in a Lanham Act trademark infringement case may recover a defendant's profits without having to prove that the defendant acted wilfully. This precedential decision makes it easier for plaintiffs to obtain monetary recovery for trademark violations and false advertising under the Lanham Act.
Previously, in order for a brand owner to protect colour as a feature of its product packaging, it had to show that the colour scheme had acquired distinctiveness through extensive use in the marketplace. However, the Court of Appeals for the Federal Circuit recently ruled otherwise, creating new possibilities for brand owners to protect the overall look and feel of their packaging and strengthen their IP toolkit.
In response to the COVID-19 pandemic, the United States Patent and Trademark Office recently announced an accelerated examination procedure for certain trademark and service mark applications covering qualifying COVID-19 medical products and services. This expedited process will benefit those that wish to protect their marks for products developed to fight the pandemic.
Gaming emote litigation: plaintiffs test different causes of action as battle ensues over Fortnite emotesUSA | 31 August 2020
Fortnite: Battle Royale's high level of success and popularity has inevitably also made the game an inviting target for litigation. In the past 18 months, several cases have been brought against Epic Games regarding some of the game's most popular emotes, particularly with regard to copyright infringement and right of publicity claims. These cases provide insight for gamers and game developers into potential claims that they may face and how to appropriately clear rights and avoid claims.
Supreme Court lets Booking.com reserve its brand: generic.com terms can now be registered as trademarksUSA | 24 August 2020
The Supreme Court recently affirmed the Court of Appeals for the Fourth Circuit's ruling in the closely watched Booking.com case, holding that the hotel reservation site's BOOKING.COM name was not generic and could therefore obtain federal trademark registration. This ruling makes registration possible for parties in any industry to register similar names as trademarks.
Fighting counterfeits at the border: Counterfeit Goods Seizure Act of 2019 would expand CBP enforcement to design patentsUSA | 17 August 2020
The Counterfeit Goods Seizure Act of 2019, which a bipartisan group of senators introduced at the end of 2019, is a significant legislative effort to tackle the problem of imported counterfeit goods. The act would add design patents to US Customs and Border Protection's current IP rights enforcement mechanism for trademarks and copyrights.
The US Copyright Office recently issued the long-awaited and first comprehensive government study on the 20-year-old Section 512 of the Copyright Act. The 250-page study contains an incredibly thorough and well-done analysis of the current law in this area, the learned challenges of this provision and the viewpoints of various stakeholders with regard to some of the challenges that exist with Section 512. This article aims to provide a brief overview of the study's key findings.
The US Court of Appeals for the Federal Circuit recently adopted several amendments to its rules of practice, which govern procedural aspects of appeals from district court patent cases and appeals from Patent Trial and Appeal Board proceedings. These amendments apply to all appeals filed or pending on or after 1 July 2020, to the extent practicable, unless otherwise ordered.
With the rise of social distancing and stay-at-home orders, the demand for online content has increased exponentially. Given this new reality, online content creators must take steps to ensure that their online creations do not land them in legal hot water. This article's examples and best practices illustrate and address the challenges associated with using music in online content.
Hard pill to swallow: TTAB denies trademark application for dietary and nutritional supplements involving CBDUSA | 20 July 2020
The Trademark Trial and Appeal Board recently affirmed a United States Patent and Trademark Office (USPTO) decision denying the application of a mark for hemp oil extracts sold as an integral component of dietary and nutritional supplements. In its decision, the USPTO had reasoned that the applicant's goods, which contained cannabidiol, were illegal under federal law – specifically, the Food, Drug and Cosmetics Act and the Controlled Substances Act.
Absent a few limited exceptions, the use of someone else's music without their permission is an infringement on their copyright. This article sets out some fundamentals to assist in determining the type of licence that an average company would need and some potential alternatives. The bottom line when planning and budgeting for music in a project is to get the proper rights and permissions in place before pressing 'play'.
A bipartisan group of representatives in the US House of Representatives recently introduced the Stopping Harmful Offers on Platforms by Screening Against Fakes in E-Commerce Act to help stem the growing concern over counterfeit products being offered for sale on online third-party marketplace e-commerce platforms. Although e-commerce is a relatively new retail platform, it has been capturing larger percentages of sales in the US retail industry.
The US Patent and Trademark Office (USPTO) has enacted a series of rule changes that will have a significant impact on trademark filers. The widest-scale change is the requirement for electronic filing of all submissions to the USPTO. However, additional application and specimen requirements are likely to have a greater effect on applicants, as compared with prior practice.
The Supreme Court has unanimously ruled that the US Patent and Trademark Office cannot shift the fees of its attorneys and paralegals to litigants in district court proceedings brought under Title 35, Section 145 of the US Code. Justice Sotomayor explained that, under the centuries-old presumption commonly known as the 'American rule', each litigant pays its own attorneys' fees "win or lose, unless a statute or contract provides otherwise".
Thus far, biosimilar uptake has been low in the United States, with market shares for most biosimilars under 10%. Given the cost-saving potential, trying to increase biosimilar uptake has been high on Congress's agenda and there are many bills pending before it dealing with issues from a variety of angles. But will they actually help to bring biosimilars to market more quickly?
Thus far, 2019 has been an eventful year for US patent law. Over the past seven months, the Supreme Court and the Court of Appeals for the Federal Circuit (the US appellate court tasked with reviewing all district court patent decisions) have issued several significant rulings that may affect the rights of patent owners. This article reviews the most important of these rulings, including decisions on the application of the on-sale bar and state sovereign immunity.
A Federal Circuit panel recently held that state sovereign immunity does not apply to inter partes review proceedings conducted before the Patent Trial and Appeal Board of the Patent and Trademark Office. The dispute had arisen after the University of Minnesota (UMN) sued LSI and Ericsson customers in a district court for the infringement of several UMN patents claiming 4G LTE telecoms technology.
The Supreme Court recently ruled six-to-three that a federal agency cannot petition for the review of an issued patent under the America Invents Act. This decision prevents the government from challenging the validity of issued patents through inter partes, post-grant and covered business method reviews.
While the biosimilar market in the United States has gotten off to a relatively slow start compared with Europe – where biosimilars have been available since 2006 – it has recently gained momentum and will continue to grow in the coming years as more blockbuster biologics lose regulatory exclusivity and patent protection.
The Supreme Court recently held that the sale of a patented invention to a third party that is contractually obligated to keep the invention confidential can trigger the on-sale bar of the Leahy-Smith America Invents Act. The decision clarifies statutory language in the act, which has been a source of considerable confusion to patent litigants. The decision also requires that IP owners carefully ensure that public disclosure of their business dealings does not interfere with their patent rights.
A Federal Circuit panel recently held that a patent term extension (PTE) granted pursuant to 35 USC Section 156 was not invalid for obviousness-type double patenting. The decision should provide pharmaceutical patentees with some assurance that their PTEs generally will not fall foul of the obviousness-type double patenting doctrine.
The Federal Circuit recently held that the assignor estoppel is not available in inter partes review proceedings. Assignor estoppel is a common law doctrine which prevents a party that assigns a patent to another party from later challenging the validity of the assigned patent. In a decision by Chief Judge Prost (joined by Judges Schall and Chen) the Federal Circuit held that the assignor estoppel is not available in inter partes reviews.
The Federal Circuit recently affirmed the Patent Trial and Appeal Board's determination that there was no interference-in-fact between the University of California's Patent Application 13/842,859 and the 12 patents and one patent application owned by the Broad Institute, the Massachusetts Institute of Technology and Harvard University concerning CRISPR-Cas9 technology.
The Federal Circuit recently affirmed a district court's denial of the US Patent and Trademark Office's request for reimbursement of attorneys' fees which it had incurred in defending a district court action brought against it under 35 USC § 145. The majority held that Section 145 expenses do not include attorneys' fees because any statute seeking to depart from the default 'American Rule' must do so using specific and explicit language, which Section 145 lacks.
The US Supreme Court recently held that patent owners can recover lost profits damages under 35 USC Section 271(f)(2) based on acts occurring outside the United States. Section 271(f)(2) imposes patent infringement liability where a party supplies components from the United States that are not "suitable for substantial noninfringing use" which it intends to be combined abroad in a manner that would infringe if the combination had occurred within the United States.
The Patent Trial and Appeal Board (PTAB) has designated a recent order as 'informative'. Although not precedential, the order provides guidance concerning the PTAB's treatment of motions to amend patent claims challenged in inter partes review proceedings following Aqua Products, Inc v Matal, wherein it was held that a patent owner in an inter partes review proceeding does not bear the burden of demonstrating the patentability of substitute claims presented in a motion to amend.
After a week-long trial and four days of deliberation, a federal jury has determined that Samsung owes Apple over $533 million in damages for infringing three design patents asserted by Apple. The jury also found Samsung liable to pay more than $5 million for infringing two utility patents.
In a recent case, the Supreme Court held that when the US Patent and Trademark Office (USPTO) institutes an inter partes review, it must decide the patentability of all of the claims challenged by the petitioner, based on the plain text of 35 USC Section 318(a). The court found no basis in the statutory text or framework for the USPTO's partial institution practice.
Two recent Federal Circuit orders have provided answers to certain venue-related questions that have arisen in patent cases. The first order stipulates that alien corporate defendants remain subject to venue in any judicial district, reaffirming the Supreme Court's long-established Brunette ruling. Further, the second order confirms that when a defendant moves to dismiss for improper venue, the burden of proving that venue is proper rests with the plaintiff and is governed by Federal Circuit law.
The Supreme Court recently heard oral argument in a case which will determine whether US patentees can recover lost profits damages arising under 35 USC Section 271(f) for certain activities occurring outside the United States. Among other things, the justices who asked questions seemed to accept the argument that the application of proximate cause would be sufficient to limit the risk of excessive damages awards and mitigate any potential harm to international comity.
In a precedential copyright decision, the Federal Circuit recently held that Google Inc's use of Oracle America, Inc's Java application programming interface was not fair use as a matter of law, contrary to a jury's finding. In so doing, the Federal Circuit reversed a decision denying Oracle's requests for judgment as a matter of law and for a damages trial.
The US Court of Appeals for the Second Circuit recently held that certain aspects of TVEyes's service – which allows users to watch video clips of programmes on Fox News and other channels – are not protected by the copyright fair-use doctrine under 17 USC Section 107. The Second Circuit addressed each of the four statutory fair-use factors and reversed the district court's determination that TVEyes's watch function constituted fair use.
Federal Circuit identifies circumstances militating against early or summary Section 101 determinationsUSA | 19 March 2018
A number of district court decisions have held patent claims to be ineligible under Section 101 during motions brought at the start of litigation or on motions for summary judgment. However, two recent Federal Circuit decisions indicate that factual disputes over aspects of the two-step test for assessing patent eligibility established by the Supreme Court, including the tangibility of claims, may hinder such early or summary Section 101 determinations.
'Repeat infringers' under Digital Millennium Copyright Act not repeat infringers as adjudged by courtUSA | 26 February 2018
In a recent case, the US Court of Appeals for the Fourth Circuit held that an internet service provider (ISP) was not entitled to the safe harbour of 17 USC Section 512(a) of the Digital Millennium Copyright Act. In so holding, the Fourth Circuit rejected the ISP's argument that the safe harbour requires that an ISP take action only against subscribers who are adjudged in court to be 'repeat infringers'.
The Federal Circuit recently handed down a decision in which it clarified that wilful infringement is an issue to be decided by a jury, rather than a district court. It held that the district court had erred in excluding as unreasonable prior art evidence concerning the defendant's litigation defences, because that evidence may also have been relevant to its subjective intent or knowledge at the time of the alleged infringement.
A three-judge panel of the Court of Appeals for the Federal Circuit recently held that although the mark FUCT comprises immoral or scandalous matter, it is still federally registrable because the bar on registering such marks set out in Section 2(a) of the Lanham Act is an unconstitutional restriction of free speech, thereby violating the First Amendment.
The Supreme Court recently heard oral argument in Oil States Energy Services, LLC v Greene's Energy Group, LLC. The Supreme Court's decision in this case will either spare or strike down inter partes review as a means for challenging the validity of issued patents in the United States.
The Federal Circuit recently held that TC Heartland represented a change of law and that Micron Technology Inc's failure to raise a venue objection in its initial motion to dismiss did not waive the objection under Rule 12 of the Federal Rules of Civil Procedure. However, the court also explained that there may be other bases on which a defendant could be found to have forfeited a venue objection.
As of July 2017 there had been at least 363 inter partes review petitions filed against patents listed in the Food and Drug Administration's Orange Book and 74 filed against patents that have been identified as reading on Purple Book Centre for Drug Evaluation and Research-listed biologic drugs. Of these 437 inter partes reviews, 116 resulted in a final written decision. There are a number of lessons to be learned from these.
There has been some concern regarding the statistics periodically issued by the US Patent Trial and Appeal Board, owing to the fact that the reported numbers overlook multiple inter partes review challenges to the same patents and, potentially, different outcomes in those challenges. While certain drug patents have been challenged in multiple inter partes review petitions, concern as to different outcomes appears to be unfounded.
A divided en banc Federal Circuit recently issued several opinions addressing the burden of proof concerning a motion to amend claims in inter partes review proceedings. While none of the opinions garnered a full majority, the leading opinion placed the burden of persuasion with respect to the patentability of amended claims on the petitioner.
The verdict in a recent patent infringement case between two pharmaceutical companies is the first instance in which a patent owner has recovered significant infringement damages under the Biologics Price Competition and the Innovation Act. It is also the first time that a patent owner has recovered damages under the act for infringement that a competitor carried out before the commercial marketing of the competitor's biosimilar.
In a recent patent infringement case, a Federal Circuit panel rejected an Eastern District of Texas judge's proposed four-factor test for determining whether venue is proper over a defendant in a patent infringement action under the 'regular and established place of business' prong of the US patent venue statute. In its place, the Federal Circuit introduced its own three requirements to determine what constitutes a 'regular and established place of business'.
The Federal Circuit recently reversed a district court's determination that a patent for a computer memory system was invalid because it was directed to a patent-ineligible abstract idea. Referring to other recent decisions on computer-related claims, the Federal Circuit majority instead concluded that the patent was directed to a patent-eligible "improvement to computer functionality".
The US Patent Trial and Appeal Board (PTAB) recently released updated statistics showing the fate of resolved inter partes review proceedings. These statistics show that a total of 4,563 inter partes review petitions were resolved as of March 31 2017, including 1,577 final written decisions. In 81% of these final written decisions, at least some instituted patent claims were found unpatentable. This statistic has contributed to concerns that the PTAB is a patent 'death squad'.
The Supreme Court recently held that the Lanham Act's disparagement clause is unconstitutional under the First Amendment's free speech clause. The court explained that the disparagement clause "offends a bedrock First Amendment disparagement principle". Trademarks cannot be denied federal registration or be cancelled merely because they offend. Assuming that they otherwise qualify, offensive trademarks are entitled to the substantial benefits of federal trademark registration.
The Supreme Court recently ruled that biosimilar makers can give notice of commercial marketing before Food and Drug Administration (FDA) licensure. The ruling resolves an ambiguity in the text of the Biologics Price Competition and Innovation Act, which gave rise to a presumption that biosimilar makers had to wait until 180 days after FDA licensure before providing notice of the commercial marketing of those products.
In a recent panel decision, the Federal Circuit suggested that an 'insubstantial differences' test may be more suitable than a 'function-way-result' test for evaluating infringement under the doctrine of equivalents in patent cases involving the chemical arts. The decision arises from unusual procedural circumstances.
The Supreme Court recently issued a decision limiting venue in patent cases to districts in which the defendant is incorporated or where the defendant has committed acts of infringement and has a regular and established place of business. The decision overturns decades-long Federal Circuit precedent under which patent defendants have been sued in states other than those in which they are incorporated or have regular places of business.
The Federal Circuit panel recently held four pharmaceutical patents invalid under the on-sale bar of 35 USC Section 102(b). Under the post-America Invents Act version of Section 102(b), public disclosure of the existence of the sale of a patented item may suffice to invalidate a patent under the on-sale bar, even if the details of the invention are not publicly disclosed in the terms of sale.
The Supreme Court recently heard oral argument in Sandoz Inc v Amgen Inc on two questions regarding the Biologics Price Competition and Innovation Act. If the court affirms Sandoz's position on these issues, sponsors will need to carefully consider how to prepare for and undertake declaratory judgment actions, perhaps within a compressed time frame and with little knowledge at the outset of the proposed biosimilar or its manufacturing process.
The Supreme Court recently heard oral argument in TC Heartland LLC v Kraft Food Brands Group LLC. The case concerns the application of part of the general venue statute which allows a corporation to be sued in multiple districts. If the court rules in TC Heartland's favour, the venue in patent cases could potentially be limited to those districts where the defendant is incorporated or has a regular and established place of business.
The Supreme Court recently heard oral argument in Impression Products Inc v Lexmark Int'l Inc on whether a patentee's US patent rights may be exhausted by certain conditional US sales or by foreign sales of a patented item, acknowledging that these would disrupt settled expectations and present serious consequences.
While federal copyright laws unquestionably allow protection for original works of art, copyright eligibility has been less clear in situations where artistic designs are incorporated into articles with utilitarian features. In a recent decision, the Supreme Court clarified the test for determining whether artistic elements incorporated into a useful article are eligible for copyright protection.
The Supreme Court recently reversed the Federal Circuit's interpretation of an infringement liability statute in litigation over whether shipping a single component of a patented multi-component invention to be assembled overseas qualifies as infringement under 35 USC Section 271(f)(1). In doing so, the Supreme Court clarified that Section 271(f)(1) does not cover the supply of a single component of a multi-component invention.
The US Supreme Court recently heard oral argument in Lee v Tam. The decision in this case will address whether Section 2(a) of the Lanham Act, which permits the US Patent and Trademark Office to refuse to register 'disparaging' trademarks, is constitutional under the First Amendment. It is difficult to tell from the oral argument how the Supreme Court will decide this case.
In a recent case, petitioner Phigenix challenged the validity of a patent which related to antibody-maytansinoid conjugates for the treatment of cancer. The Federal Circuit dismissed Phigenix's appeal for lack of standing under Article III of the Constitution. In dismissing the appeal, the Federal Circuit, among other things, reiterated the minimum requirements for Article III standing.
The Supreme Court recently heard oral argument on the interpretation and application of a statutory provision which imposes infringement liability on US manufacturers that supply components of patented inventions for use abroad. At issue is whether the export from the United States of a single component of a patented multi-component invention, which is later assembled outside the United States, qualifies as an infringing act.
In a recent decision, the Supreme Court rejected the Federal Circuit's interpretation of a damages statute in litigation between Apple and Samsung over Apple's smartphone design patents. The court disagreed with the Federal Circuit over the term 'articles of manufacture' and overturned its decision, therefore raising the possibility that Apple's $399 million in damages could be reduced significantly.
Federal Circuit holds failure to provide opportunity to respond to portion of prior art is procedural violationUSA | 05 December 2016
The Federal Circuit recently found that the Patent Trial and Appeal Board (PTAB) violated a patentee's rights in an inter partes review proceeding by cancelling patent claims based on a portion of a prior art reference that was not specifically identified and by denying the patentee the opportunity to address that portion of the reference. The Federal Circuit vacated the cancellation of the claims and remanded the matter to the PTAB.
The Trademark Trial and Appeal Board recently reiterated its position that a product or service which is legal at the state level cannot qualify for a federal service mark registration if the product or service is illegal under federal law. This ruling, which is especially relevant in view of the growing number of states legalising marijuana, demonstrates the growing practice of the US Patent and Trademark Office to look beyond the language used by applicants to determine a hidden agenda.
In a rare decision resulting in trademark registration status for a colour mark, the Trademark Trial and Appeal Board (TTAB) recently found the colour white to be registrable. The TTAB noted that while a mark comprised of a single colour cannot be inherently distinctive, a product's colour can be protected as a trademark and acquired distinctiveness can be found for a colour in conjunction with a product. Nonetheless, the process of obtaining colour registrations remains difficult.
In another chapter chronicling the relationship between functionality and trademarks, the Trademark Trial and Appeal Board (TTAB) recently found that an application claiming a motion mark depicting a specific product configuration was functional, thereby making the mark unregistrable. The TTAB considered four factors when analysing the functionality of Loggerhead Tools, LLC's trademark application and affirmed the refusal on all factors.
TTAB instructive decision concludes that social media advertising is not evidence of trademark servicesUSA | 31 October 2016
In an instructive decision for trademark applicants relying on social media to help advertise and promote their products and services, the Trademark Trial and Appeal Board recently concluded that advertising and promoting via a social networking website does not, in and of itself, support a trademark registration for such services, unless the applicant is in the business of providing such services.
The Trademark Trial and Appeal Board recently concluded a nine-year battle between Mini Melts, Inc and Reckitt Benckiser LLC, refusing the applicant's mark on the basis of descriptiveness. The decision warns trademark applicants seeking to register an arguably descriptive mark on the grounds of acquired distinctiveness that advertising and sales evidence may be insufficient to support their claim.
In a recent decision the Federal Circuit en banc held that a contract manufacturer's sale to the patentee of manufacturing services – where both the title to the patented embodiments and the right to market them did not pass to the manufacturer – did not constitute an invalidating sale. The Federal Circuit asserted that commercial benefit is not enough to trigger the on-sale bar. Rather, the transaction must be one in which the product is commercially marketed.
The Supreme Court recently granted in part a petition for certiorari filed by LifeTech concerning the interpretation and application of a statutory provision in relation to infringement for US manufacturers that supply components of patented inventions for use abroad. The court declined to consider whether a single entity can actively induce itself to infringe a patent.
The US Supreme Court recently lowered the bar for awards of enhanced patent damages. The court held that an award of enhanced patent damages should be left to the discretion of the district courts, entitlement to enhanced damages need be proven only by a preponderance of the evidence and an appellate court should review an enhanced patent damages award for abuse of discretion.
Supreme Court affirms non-appealable nature of institution decisions and use of broadest reasonable construction standardUSA | 11 July 2016
The US Supreme Court recently held that 35 USC Section 314(d) bars challenge to the US Patent and Trademark Office's (USPTO) decision to institute aninter partes review, and that the USPTO's application of the 'broadest reasonable construction' standard to interpret patent claims is a reasonable exercise of the rulemaking authority granted by Congress.
The Trademark Trial and Appeal Board recently utilised the relevant factors from In re EI du Pont de Nemours & Co to determine likelihood of confusion between the HOUSEBOAT BLOB mark and three other pertinent marks on the Principal Register. Despite some differences in sound, appearance and meaning, the marks created commercial impressions that were sufficiently similar to be likely to give rise to confusion.
The Trademark Trial and Appeal Board recently addressed claims of abandonment, asserting that an intent-to-use applicant need not use its mark until it files the statement of use, and that a company's use of its subsidiary's trademark does not inure to the subsidiary's benefit when the parent company controls the nature and quality of the products sold under the mark.
The Trademark Trial and Appeal Board recently decided that a consent agreement between parties is not dispositive when determining whether a trademark is likely to cause confusion. Instead, the determining entity needs to look at the entirety of the relevant factors and determine whether other factors for likelihood of confusion outweigh the existence of the consent agreement.
The Trademark Trial and Appeal Board recently decided that a foreign-language translation of a mark registered in English is not the 'same mark' as the previously registered mark. This decision should encourage applicants seeking a foreign-language mark with a registered English translation to offer substantial evidence that consumers would recognise the foreign-language mark as the 'same mark' as the registered mark.
The Trademark Trial and Appeal Board (TTAB) recently shed light on when fame must be shown in cases of dilution by blurring. The board decided that fame must be shown as of first use of an applicant's trademark, and as of the date of first use of any kind by an applicant. The TTAB's findings arguably make it more difficult for an opposer to assert a claim of dilution by blurring when an applicant has previously used its mark in commerce.
On May 9 2016 the US Patent Trial and Appeal Board (PTAB) designated as precedential five decisions that provide guidance on various issues relating to America Invents Act review proceedings. Alongside discussion of the distinct standards for 'routine' and 'additional' discovery in inter partes review proceedings, the PTAB provided three points of clarification for any proposed claim amendment in inter partes reviews.
The House of Representatives recently joined the Senate in passing the Defend Trade Secrets Act 2016. The act creates a federal civil cause of action for trade secret misappropriation and an ex parte mechanism for civil seizures when necessary to prevent dissemination.
The Federal Circuit recently issued its opinion in Romag Fasteners, Inc v Fossil, Inc, holding that under Second Circuit law, a trademark owner can recover profits of an infringer only for wilful infringement and that the equitable defence of laches applies to patent infringement actions. However, the ruling does not to resolve the circuit split regarding the need to prove wilfulness to be awarded profits for trademark infringement.
The Fourth Circuit Court of Appeals has concluded that a false advertising or false association claim made under Section 43(a) of the Lanham Act need not be premised on the ownership of a US trademark registration or even use of a mark in the United States.
The Federal Circuit recently held that the District of Delaware could exercise specific jurisdiction over generic pharmaceutical company Mylan because its abbreviated new drug application filings and distribution capabilities proved that it planned to market generic versions of its competitors' drug products in Delaware. The Federal Circuit majority opinion did not consider the question of whether general personal jurisdiction was proper.
The Federal Circuit recently held that it lacks jurisdiction to review a Patent Trial and Appeal Board (PTAB) decision denying institution of inter partes review on grounds that the PTAB deemed redundant. The Federal Circuit further held that a petitioner is not prevented from later raising such denied grounds before the US Patent and Trademark Office or a district court.
The Supreme Court has heard oral argument in the consolidated cases of Stryker Corp v Zimmer, Inc and Halo Electronics, Inc v Pulse Electronics, Inc. The principal issue presented by these cases is of widespread interest: when is it appropriate for a trial court to award enhanced damages once patent infringement liability has been established?