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Intellectual Property
But the jury will be free to decide that the school was a co-owner of the works and that it had a license to use them. A writer’s claim that a Chicago-based culinary school infringed her contributions to a teaching website can go to trial, the federa...
PATENT—Fed. Cir.: Anticipation judgment affirmed where patent claims lacked support in original specification for priority purposes
November 29, 2021
Kevin M. Finson, J.D.
Patent claims for soluble films used to dispense medication could not be given a priority date of the original application because they were not found in the specification as originally written. Substantial evidence supported the Patent Trial and App...
PATENT—N.D. Cal.: Gypsum board manufacture failed to plead inequitable conduct by competitor in patent prosecution
November 29, 2021
Kevin M. Finson, J.D.
A claim for inequitable conduct failed because it did not allege that one attorney in question owed a duty of candor and only claimed that duplicative material was withheld. Dismissal with prejudice was appropriate for an improperly pleaded claim of ...
TRADEMARK—Fed. Cir.: TTAB's denial of a cancellation petition for MONEY MART pawnshop mark reversed
November 29, 2021
Linda Panszczyk, J.D.
The Board provided no support for the notion that a registrant has priority as to a specific service it was second to offer just because it was first to offer a different service that is a species of a genus that covers both specific services. The Tr...
TRADEMARK—TTAB: Nobody beat THE WIZ in the 1980s, but Samsung prevails over the legendary mark today
November 29, 2021
Matthew Hersh, J.D.
The phrases THE WIZ and NOBODY BEATS THE WIZ may have been famous in their time, but they would not be confused with the SAMSUNG WIZ today. A phrase containing the word WIZ could be listed on the Principal Register despite its overlap with an existin...
COPYRIGHT NEWS: Miramax sues to stop Quentin Tarantino from auctioning Pulp Fiction screenplay excerpts as NFTs
November 29, 2021
Cheryl Beise, J.D.
Tarantino claims the auction falls under his “reserve rights” in publication of the screenplay. Shortly after famed director Quentin Tarantino announced his intention to auction off excerpts from his original handwritten screenplay for the 1994 iconi...
Intellectual Property
TOP STORY—N.D. Cal.: Apple’s challenge to the NHK-Fintiv doctrine can’t be heard in federal court
The technology company lacked standing to pursue its claim that the PTO’s rules for inter partes review unlawfully deferred to pending court cases A set of rules developed by the Patent Office to determine when the validity of existing patents would ...
Note to Subscribers
November 19, 2021
IP Law Daily will not publish next week due to the Thanksgiving Day holiday. However, we will issue breaking news alerts for major developments during this period. We will resume publication on Monday, November 29, with the extensive coverage you hav...
PATENT—E.D. Tex.: Patent for computer forum with comment rating system was not directed to an abstract idea
November 19, 2021
Kevin M. Finson, J.D.
A computer forum system which allowed users to rank comments for organization recited improvements to computer technology as opposed to merely implementing an abstract idea on conventional computer technology. Patent claims for a networked or interne...
PATENT—E.D. Tex.: PNC Bank’s suit against USAA over patents for electronic banking interfaces proceeds
November 19, 2021
Brian Craig, J.D.
Factual disputes exist whether the patent claims to track customer spending and system for savings were conventional and well-understood at the time the patents were filed. In PNC Bank’s counterclaims against USAA for infringement of patents relating...
TRADEMARK—E.D.N.Y.: Importer of European foods plausibly alleges infringement over gray market goods
November 19, 2021
Brian Craig, J.D.
The importer adequately alleges violations under both the material differences test and the quality control test in the gray market goods case. An importer and exclusive authorized distributor of European specialty foods plausibly has alleged tradema...
TRADEMARK—TTAB: A mashup of languages mark wins over the Trademark Board
November 19, 2021
Matthew Hersh, J.D.
Because the proposed mark combined one word from the Greek and Italian with another word from the Spanish, consumers would not recognize its descriptive English-language equivalent The phrase TAVERNA COSTERA did not implicate the doctrine of foreign ...
WORTH NOTING—Other IP law developments
November 19, 2021
WK Editorial Staff
A periodic roundup of other items of interest to the Intellectual Property community. COPYRIGHT—E.D. Tex .: Comic book creator Kevin Atkinson failed to state a claim that a comic book entitled “The Umbrella Academy,” created by Gerard Wray, which was...
Intellectual Property
The lawsuit against the Sinclair Broadcasting Group survived motions for summary judgment on a wide range of grounds. A lawsuit alleging that a nationwide syndicate of television stations unlawfully posted images of a specialty breed of cats to its n...
PATENT—Fed. Cir.: VoIP patents challenged in IPR proceeding held obvious in light of prior art
November 18, 2021
Kevin M. Finson, J.D.
Substantial evidence supported the PTAB’s conclusion that a person skilled in the art would have found the prior art taught the claimed VoIP instant messaging system. Patent claims concerning instant messaging over VoIP were obvious in light of the p...
TRADEMARK—N.D. Ill.: Wrigley’s defense of its SKITTLES brand against by California cannabis seller remains in Illinois
November 18, 2021
Pamela C. Maloney, J.D.
An Illinois federal court had jurisdiction over infringement claims brought by a Chicago-based candy maker against a California-based cannabis seller using the mark ZKITTLEZ. A California company that operated an interactive website through which the...
TRADEMARK—TTAB: ‘LETTERS & NUMBERS’ mark too generic to register
November 18, 2021
Donielle Tigay Stutland, J.D.
Mark was generic for educational books for drawing and tracing letters and numbers. The Trademark Trial and Appeal Board has affirmed an examining attorney’s refusal to register the mark “LETTERS & NUMBERS” because it was deemed too generic for the c...
BLOG TRACKER—Noteworthy blog posts and other commentary
November 18, 2021
WK Editorial Staff
The week’s most insightful, intriguing, or entertaining blog posts regarding intellectual property issues: The TTABlog, New Nonuse Provisions of Trademark Modernization Act May Significantly Impact Non-US Trademark Owners , by John Welsh Technology &...
SUPREME COURT DOCKET: Recent decisions, cases, and petitions pending High Court review
November 18, 2021
WK Editorial Staff
This IP Law Daily feature presents a chart highlighting the decisions, arguments, briefs, and petitions on intellectual property issues before the October 2021 Term of the U.S. Supreme Court. The U.S. Supreme Court on November 8 heard arguments in th...
Intellectual Property
The new regulations clear the way for the landmark Trademark Modernization Act to come into effect. A longstanding effort to streamline the federal trademark registry was given a major push today when the Patent and Trademark Office issued its final ...
STRATEGIC PERSPECTIVES: WK Future Ready Lawyer Survey adds insights to summit talk on in-house, outside counsel relationships in life sciences sector
November 17, 2021
Thomas Long, J.D.
Panelists discuss trends, tips for deploying legal technology as organizations prepare for a post-pandemic world. At a November 10 session of the third annual dLaw Life Sciences Summit, Ken Crutchfield, Vice President & General Manager of Legal Marke...
COPYRIGHT—S.D. Cal.: Preliminary injunction denied in payment software infringement suit
November 17, 2021
Robert B. Barnett Jr., J.D.
Although the copyright holder could show a likelihood of success on the merits of his copyright claim, he could not adequately demonstrate irreparable harm. The owner of copyrighted software that handles internet transactions failed to obtain a tempo...
PATENT—Fed. Cir.: Putative co-inventor failed to show corroborating evidence that she contributed to invention of a vehicle safety device
November 17, 2021
Kevin M. Finson, J.D.
An individual was who claimed to be a co-inventor on a patent for a head and neck restraint device used to ensure driver safety in high performance vehicles failed to offer corroborating evidence. Summary judgment was properly granted against a putat...
TRADEMARK—N.D. Cal.: Trademark declaration brought by Impossible Foods against Impossible IX dismissed for lack of personal jurisdiction
November 17, 2021
Donielle TIgay Stutland, J.D.
Impossible Foods sought a declaratory judgement that its Impossible mark did not infringe on a mark owned by Impossible IX, and that Impossible IX had abandoned some of its marks; a California court dismissed the case for lack of personal jurisdictio...
TRADEMARK—S.D.N.Y.: Sketchers prevails in comfort shoe trade dress suit brought by Easy Spirit
November 17, 2021
Brian Craig, J.D.
Following a bench trial, the court found no meaningful likelihood of confusion, especially with no direct evidence that consumers were actually confused. In a trademark infringement case involving competing shoe manufacturers, the federal district co...
Intellectual Property
TOP STORY—Fed. Cir.: Generic manufacturer did not infringe Horizon Medicines’ DEUXIS drug patents
The district court properly found that that asserted claims of one patent were invalid as obvious, and generic manufacturer’s infringement of a related patent was moot. Horizon Medicines LLC’s infringement claims against generic drug manufacturer Alk...
STRATEGIC PERSPECTIVES: Ownership and rights conveyed by NFTs explored in new article
November 16, 2021
WK Editorial Staff
“While they are posed to solve the ownership problem of the virtual world, without some drastic intervention from legislators, NFTs may turn into nothing more than a collective illusion of Ownership.” A new article by Sophie Goossens and Nick Breen ,...
PATENT—D. Del.: Continental Automotive’s FRAND licensing suit against Nokia remanded to state court
November 16, 2021
Thomas K. Lauletta, J.D.
Neither a pleading of patent exhaustion, nor an alleged fear of a patent infringement lawsuit, created federal jurisdiction. The U.S. district court in Wilmington, Delaware granted plaintiff Continental Automotive’s motion to remand its breach of con...
PATENT—Fed. Cir.: Western District of Texas ordered to transfer two more cases to Northern District of California
November 16, 2021
Kevin M. Finson, J.D.
The Western District of Texas abused its discretion by refusing to transfer two patent cases to the Northern District of California because the court wrongly construed the governing factors and gave too much weight to the issue of court congestion. I...
TRADEMARK—N.D. Cal.: Injunctive relief granted in Dr. Martens trade dress case
November 16, 2021
Deirdre Kennedy, J.D.
Remedies at law were inadequate to address plaintiff’s injuries. In a trademark infringement case involving Dr. Martens footwear, the federal district court in San Francisco, California has granted AirWair International as owner of the Dr. Martens tr...
TRADEMARK—N.D.N.Y.: Masonic motorcycle organization casts the first stone, wins round one in lawsuit against fellow biker group
November 16, 2021
Matthew Hersh, J.D.
The trademark and copyright infringement lawsuit, between two biker groups associated with the Freemasonry organization, survived a motion to dismiss. A lawsuit asserting that one group of motorcycle riders associated with a prominent fraternal organ...