Intellectual Property

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Intellectual Property

PATENT—Fed. Cir.: On remand from Supreme Court, challenge to medical device patent again barred

Applying the High Court’s guidance, the Federal Circuit reached the same conclusion as its earlier judgment that “assignor estoppel” precluded an accused infringer from challenging patent claims that its predecessor had warranted as valid in an asset...

PATENT—Fed. Cir.: On remand from Supreme Court, challenge to medical device patent again barred
Law Firms Mentioned:Arnold & Porter Kaye Scholer LLP | Barnes, D’Amour and Vogel | Consovoy McCarthy PLLC | DLA Piper LLP | Forge IP, PLLC | Greenberg Glusker Fields Claman & Machtinger LLP | Hersh Mannis LLP | McChain Hamm & Associates, LLP | Morrison & Foerster LLP | Partridge Partners, P.C. | Prince Lobel Tye LLP | Quinn Emanuel Urquhart & Sullivan, LLP | Renner Otto Boisselle & Sklar LLP | Richard Law Group, Inc. | Rimon PC | SV Employment Law Firm PC | Sidley Austin LLP | Taft Stettinius & Hollister LLP | Wilson, Sonsini, Goodrich & Rosati, P.C.
Organizations Mentioned:Alcon Vision LLC | Aliign Activation Wear, LLC | Ask Media Group, Inc. | Axioma Metering UAB | Bluecrew, Inc. | Cytyc Surgical Products, LLC | Hewlett Packard Enterprise Co. | Hologic, Inc. | IAC/InterActiveCorp | Intellectual Ventures I LLC | Intellectual Ventures II, LLC | Kamstrup A/S | Lens.com, Inc. | Minerva Surgical, Inc. | Republican National Committee | Virgin Islands Republican Party | Zuma Array Ltd. | lululemon USA Inc. | lululemon athletica Canada Inc.
COPYRIGHT—C.D. Cal.: Dispute over song royalties between Beach Boys’ Brian Wilson and ex-wife remanded to family court
August 12, 2022
Robert Margolis, J.D.

A claim to royalties arising from tenants-in-common rights in Wilson’s compositions does not implicate exclusive rights under the Copyright Act. Marilyn Wilson-Rutherford, ex-wife of Brian Wilson of The Beach Boys fame, may pursue in California Famil...

PATENT—Fed. Cir.: One piece casting product-by-process did not impart patentable weight
August 12, 2022
Kevin M. Finson, J.D.

A “cast in one piece” term was properly ignored by the PTAB in obviousness and anticipation determinations because it did not impart a structural or functional difference to the final product. A maker of ultrasonic flow meters was unable to show that...

TRADEMARK—D.V.I.: Republican National Committee obtains ban on use of marks by former licensee pending trail
August 12, 2022
Ursula Furi-Perry, J.D.

The RNC’s trademarks were valid and legally protectable and there was a likelihood of confusion arising from their use by the Virgin Islands Republican Party. The Republican National Committee sued the Virgin Islands Republican Party and its former c...

TRADEMARK—TTAB: SMART BEZEL merely descriptive, ineligible for registration
August 12, 2022
Jonathan Anderson

Applicant disclaimed “Smart” and the composite mark serves as a description of a feature or characteristic of the identified goods. The Trademark Trial and Appeal Board in a precedential decision has affirmed an examining attorney’s refusal to regist...

WORTH NOTING—Other IP law developments
August 12, 2022
WK Editorial Staff

A periodic roundup of other items of interest to the Intellectual Property community. PATENT—Fed. Cir .: The U.S. Court of Appeals for the Federal Circuit has denied a request by Hewlett Packard Enterprise (HOE) for a writ of mandamus directing the f...

Intellectual Property

COPYRIGHT—S.D. Miss.: Aggregator’s reproduction of entire news articles was not fair use

Although genuine issues of dispute remained about whether news snippets constituted fair use, reproductions of entire new articles were clearly not fair use. In a newspaper’s suit against an online news aggregator for copyright infringement, the news...

COPYRIGHT—S.D. Miss.: Aggregator’s reproduction of entire news articles was not fair use
Law Firms Mentioned:Baker & Hostetler LLP | Brunini, Grantham, Grower & Hewes, PLLC | Dorsey & Whitney LLP | Focal PLLC | Fross Zelnick Lehrman & Zissu PC | K&L Gates LLP | Kilpatrick Townsend & Stockton LLP | Lewis & Llewellyn | Oved & Oved LLP | Stobbs IP | Weintraub Tobin Chediak Coleman Grodin Law Corp. | Wilson Carroll, PLLC | Wolf, Greenfield & Sacks, P.C. | Womble Bond Dickinson | Wright, Close & Barger
Organizations Mentioned:APP Group (Canada) Inc. d/b/a Mackage | APP Group Inc. d/b/a Mackage | Avago Technologies US Inc. | CAE Integrated, LLC | Capital Asset Exchange and Trading, LLC | Emmerich Newspapers Inc. | Harpo, Inc. | LSI Corp. | Particle Media, Inc. d/b/a News Break | Regents of the University of Minnesota | Roulette Productions LLC | Rudsak USA Inc.
PATENT—Fed. Cir.: PTAB correctly found that university’s patent for reducing computer error code were not anticipated
August 11, 2022
Kevin M. Finson, J.D.

Patent claims directed at a method for reducing errors in computer storage were not anticipated because the elements of the prior art reference relied upon to show anticipation merely summarized earlier work of the patent inventors. A maker of comput...

TRADE SECRETS—5th Cir.: Preliminary injunction against semiconductor trader, and competitor properly denied
August 11, 2022
Jason Albright, J.D.

A semiconductor company did not show likelihood of success on trade secret misappropriation claims against a former employee and competing enterprise it sought to restrain from contacting 200 key customers. The Fifth Circuit affirmed a district court...

TRADEMARK—S.D.N.Y.: Claims that coat manufacturer infringed Mackage’s trade dress dismissed
August 11, 2022
Robert Margolis, J.D.

Mackge failed to allege how its V-shaped collars and/or asymmetrical zippers are non-functional, distinctive, or had acquired secondary meaning. APP Group d/b/a Mackage has failed to plead with specificity that the V-shaped fur collars and/or asymmet...

BLOG TRACKER—Noteworthy blog posts and other commentary
August 11, 2022
WK Editorial Staff

The week’s most insightful, intriguing, or entertaining blog posts regarding intellectual property issues. Patently-O, Reviewing the Patent Eligibility Restoration Act of 2022 , by Dennis Crouch (University of Missouri School of Law) Kluwer Trademark...

TRADEMARK NEWS: Two podcasters raise the ire of Oprah by allegedly infringing on her trademarked name
August 11, 2022
Matthew Hersh, J.D.

The longtime talk show host and one-woman brand seeks only an injunction and not damages. A podcast that describes itself as “The unauthorized Study of The Queen of Talk” has something new to talk about now that it has been sued by the Queen herself....

Intellectual Property

PATENT—Fed. Cir.: PTAB properly rejected proposed reissue claims as precluded by recapture rule

A patent applicant sought reissuance based on removing limitations that were intentionally added to avoid § 101 rejection in initial application. The “recapture rule” applicable to claims for reissuance of patent claims, barred the reissue applicatio...

PATENT—Fed. Cir.: PTAB properly rejected proposed reissue claims as precluded by recapture rule
Law Firms Mentioned:Baker & Hostetler LLP | Cooley, LLP | Fish & Richardson P.C. | Hahn Loeser & Parks LLP | Law Office of R. Alan Burnett | Morris, Nichols, Arsht & Tunnell LLP | Potter Anderson & Corroon LLP | Seyfarth Shaw LLP | Surge IP | The Eley Law Firm
Organizations Mentioned:DeLorean Motors Reimagined LLC | Gerlach Maschinenbau GmbH | Gerlach, Inc. | HyphaMetrics,Inc. | Karma Automotive LLC | L3Harris Technologies, Inc., fka, L3 Technologies, Inc. | Masterfile Corporation | Microsoft Corp. | Nielsen Co., (US), LLC | Reimagined Automotive LLC | Science Applications International Corp. | Troester Machinery Ltd. | Vanner Inc.
PATENT—Fed. Cl.: License agreement with nonparty did not alter indefiniteness of head up display patents
August 10, 2022
Cheryl Beise, J.D.

The license agreement did not show that a POSITA would understand the patents’ image registration limitations. Patent owner Science Applications International Corporation (SAIC) failed to show that a patent license agreement between a third-party def...

PATENT—D. Del.: Television monitoring device patent may claim inventive concept
August 10, 2022
Kevin M. Finson, J.D.

A device that determined whether an attached television was on or off using two different current thresholds was not unpatentable as an abstract idea because it contained an inventive concept. A maker of television monitoring devices failed to show t...

TRADEMARK—TTAB: Registration denial of MBBM mark reversed; goods were not related to those covered by similar mark
August 10, 2022
Robert B. Barnett Jr., J.D.

The reversal of a trademark application denial on likelihood-of-confusion grounds with an existing mark was based on a disagreement about whether the goods in the two marks were related. The Trademark Trial and Appeal Board has reversed the rejection...

TRADEMARK—N.D. Ohio: District court with jurisdiction when complaint filed had jurisdiction over remaining trademark cancellation claim
August 10, 2022
Robert B. Barnett Jr., J.D.

A federal court has jurisdiction to hear a lone remaining trademark cancellation claim if the court had federal jurisdiction independent of the claim when the complaint was filed. In a trademark infringement case in which the only remaining claim was...

TRADE SECRETS NEWS: Company behind the new DeLorean was built on stolen trade secrets, a new lawsuit alleges
August 10, 2022
Matthew Hersh, J.D.

The lawsuit comes just a week before an all-electric version of the iconic car is set to debut. The company responsible for making an all-electric version of the DeLorean, the distinctive gull-winged car that found widespread fame with the Back to th...

Intellectual Property

COPYRIGHT—D.P.R.: Song contest’s release and affidavit did not constitute valid copyright transfers

Cortés-Ramos, rather than Sony, was the original owner of the copyright and, thus, Cortés-Ramos could pursue his copyright infringement claim against Ricky Martin. When Luis Adrian Cortés-Ramos entered a song in Sony’s SuperSong Contest, and he then ...

COPYRIGHT—D.P.R.: Song contest’s release and affidavit did not constitute valid copyright transfers
Law Firms Mentioned:Antonelli, Harrington & Thompson LLP | Bryan Cave Leighton Paisner LLP | Carr & Ferrell LLP | EmergeCounsel, LLC | Gelber Schachter, Greenberg, P.A. | LegalForce RAPC Worldwide, PC | Lejune Law Firm | Manos Schenk, PL | Pietrantoni Mendez & Alvarez LLC | Rodriguez Lopez Law Office | Stipkala and Klosowski LLC
Organizations Mentioned:Broadway National Bank d/b/a Broadway Bank | K3 Enterprises, Inc. | Ministry of Coffee, LLC | Moc Kahve Gida San. Tic. Ltd. Sti | Textile Computer Systems, Inc.
COPYRIGHT—D.S.C.: Statutory damages for photographs with real estate listings limited to single award
August 9, 2022
Brian Craig, J.D.

To avoid a windfall involving downstream users, the court limited statutory damages to one award of statutory damages per copyrighted work. In a copyright infringement case brought by a photographer against real estate professionals involving aerial ...

PATENT—D. Tex.: Dismissal granted in part in credit card authorization patent dispute
August 9, 2022
Kevin M. Finson, J.D.

The patentee did not adequately allege pre-suit knowledge of the infringement. A patentee of credit card authorization systems did not plausibly allege induced or contributory infringement with respect to several patents, the U.S. District Court in W...

TRADE SECRETS—S.D. Fla.: Skincare company will get to trial on claim that competitor misappropriated its trade secrets
August 9, 2022
Matthew Hersh, J.D.

The competitor allegedly purloined trade secrets acquired during a confidential relationship and sold its own version of a popular product. A Florida company that sells skin care products will have a chance to prove at trial that a Canadian company a...

TRADEMARK—TTAB: Turkish trademark application denied in absence of intent to use the mark in the U.S.
August 9, 2022
Robert B. Barnett Jr., J.D.

In an easy decision, the Board cancelled a request to extend trademark protection to the U.S. because the Turkish company admitted that it had no intent to use the mark in the U.S. A petition by Ministry of Coffee, LLC, to cancel a request to extend ...

TRADEMARK—TTAB: ‘INFLATION DEFENDER’ likely to cause confusion with ‘INFLATION DEFENSE’
August 9, 2022
Brian Craig, J.D.

Consumers could mistakenly believe the two marks are a variation of each other emanating from a common source. Concluding that a likelihood of consumer confusion exists between the applied-for mark INFLATION DEFENDER and the registered mark INFLATION...

Intellectual Property

TRADEMARK—TTAB: Orange County, California, cannot register marks used as government insignia

The County did not need to officially adopt the marks for them to qualify as insignia precluded from registration under the Trademark Act. Orange County, California, was not entitled to register a circular emblem for use in government activities beca...

TRADEMARK—TTAB: Orange County, California, cannot register marks used as government insignia
Law Firms Mentioned:Amy E. Burke, Attorney at Law | Gibbons P.C. | Goodman Mooney LLP | Holland & Knight LLP | Mayer Brown LLP | One LLP | Paul Hastings LLP | Ponce de Leon Avenue | Skadden Arps Slate Meagher & Flom, LLP
Organizations Mentioned:21 In Right, Inc. | American Beverage Corp. | Capri Sun GmbH | Chevron Oronite Co. LLC | Clemente Properties, Inc. | Commonwealth of Puerto Rico | County of Orange | Flame & Wax, Inc. | Infineum USA L.P. | Laguna Candles, LLC | Puerto Rico Convention District Authority
PATENT—Fed. Cir.: Engine lubricating oil formulations were obvious in light of the prior art
August 8, 2022
Kevin M. Finson, J.D.

The PTAB’s findings of obviousness were upheld because the Board appropriately considered the arguments raised and the findings were supported by substantial evidence. A maker of engine lubricating oil failed to show that its patent claims were not o...

TRADEMARK—S.D.N.Y.: Capri Sun not entitled to interlocutory appeal of contractual damages ruling
August 8, 2022
Cheryl Beise, J.D.

The court’s pre-trial denial or disgorgement of profits damages from former licensee was based in contract interpretation. In a trademark infringement and breach of contract action between Capri Sun and a former licensee accused of selling fruit drin...

TRADEMARK—TTAB: Petition to cancel LAGUNA CANDLES for geographic descriptiveness denied amid evidence of acquired descriptiveness
August 8, 2022
Robert B. Barnett Jr., J.D.

The Board allowed a registration asserting changed circumstances to be filed just four months after the Board rejected the original registration application. A petition by Flame & Wax, Inc., to cancel registration by its competitor Laguna Candles, LL...

PATEN NEWS: Bipartisan patent equity bill introduced in House; companion legislation already in Senate
August 8, 2022
Jonathan Anderson

The legislation requires outreach to underrepresented groups and establishes a pilot program to assist first-time prospective patent applicants. On August 5, 2022, Representatives Deborah Ross (D-N.C.) and Nancy Mace (R-S.C.) introduced legislation i...

TRADEMARK NEWS: MLB legend’s sons take swing at Clemente '3,000th hit' license plates
August 8, 2022
Thomas Long, J.D.

The sons’ lawsuit alleges that the Government of Puerto Rico infringed and diluted trademarks associated with the late baseball player and misappropriated publicity rights. The Government of Puerto Rico infringed and “tarnished” trademark rights in t...