Intellectual Property Legal Research & News

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Intellectual Property

TOP STORY—Fed Cir.: Lighted artificial tree patents invalid as obvious on second appeal

Contested claims under two patents for lighted artificial trees were held obvious after the application of corrected claim construction. The asserted claims of two patents covering lighted artificial trees were invalid as obvious, the U.S. Court of A...

TOP STORY—Fed Cir.: Lighted artificial tree patents invalid as obvious on second appeal
COPYRIGHT—E.D. Mich.: Without help from an expert, software developer could not prove its code was protected
January 19, 2022
Matthew Hersh, J.D.

The developer’s unsupported contention that his code was expressive fell well short of the required standard. A software designer’s bare assertion that his code was made up of expressive and not merely functional content was not sufficient to demonst...

PATENT—E.D. Pa.: Criminal antitrust conspiracy case against Teva and Glenmark will proceed
January 19, 2022
Wendy Biddle, J.D.

No valid reasons to sever and joinder was proper given the logical connection of the acts. In the Department of Justice Antitrust Division’s antitrust conspiracy case alleging that Glenmark Pharmaceuticals and Teva Pharmaceuticals fixed the price of ...

TRADEMARK—1st Cir.: Website not enough to show contact with forum state or intentional trademark infringement
January 19, 2022
Donielle Tigay Stutland, J.D.

First Circuit affirmed a decision to dismiss a trademark suit brought by Motus LLC against CarData Consultants Inc. for a lack of personal jurisdiction, and because alleged trademark infringement was not shown to be an intentional tort within the for...

LAW FIRM NEWS: IP attorneys honored, promoted, on the move
January 19, 2022
WK Editorial Staff

Entering 2022, law firms continue to beef up their IP practice teams. In recent weeks, McGuireWoods, Fried Frank, Kirkland & Ellis, Armstrong Teasdale, Womble Bond Dickenson, and Bond Schoeneck & King have added IP practitioners, some heading up prac...

PUBLICITY RIGHTS NEWS: Florida lawsuit aims to protect right of publicity of high school athletes
January 19, 2022
Matthew Hersh, J.D.

The debate over student athlete compensation, largely focused on college sports, reaches the high school arena. The organizations responsible for administering high school sports in Florida have unlawfully conspired to deny student athletes the right...

Intellectual Property

TOP STORY: Challenge to the NHK-Fintiv doctrine won’t be heard at the Supreme Court

The High Court declined to hear two petitions for certiorari that challenged the PTO’s inter partes review rules. A controversial policy of the Patent and Trademark Office for reviewing the validity of existing patents will remain the law for now, gi...

TOP STORY: Challenge to the NHK-Fintiv doctrine won’t be heard at the Supreme Court
PATENT—Fed. Cir.: Federal Circuit declines to block transfer of patent infringement suit
January 18, 2022
Jonathan Anderson

The district court did not abuse its discretion in departing from the first-to-file rule, the appeals court concluded. The U.S. Court of Appeals for the Federal Circuit has declined to issue a writ of mandamus requested by a company seeking to preven...

PATENT—Fed. Cir.: Substantial evidence supported PTAB’s anticipation ruling
January 18, 2022
Kevin M. Finson, J.D.

A system for storing and searching data from a mobile phone was properly denied registration because it was anticipated by prior art references. A patent claim involving the storage of alphanumeric data by mobile phone was invalid as anticipated, the...

PATENT—N.D. Cal.: HTC prevails in infringement suit brought by VR headset patent holder
January 18, 2022
Kevin M. Finson, J.D.

Summary judgment was granted against a patent holder because it produced no admissible evidence in response to an interrogatory request for all facts supporting its theory of infringement. HTC America, a maker of virtual reality (VR) headsets, was en...

TRADEMARK—D. Minn.: Owner of registered ‘Hammer-Schlagen’ mark for Oktoberfest game must counter evidence of genericness
January 18, 2022
Nicole L. Chaney, J.D.

The trademark dispute is rooted in the lengthy cultural history and traditions of the German-Americans in Minnesota. The federal district court in St. Paul has denied a mark holder’s motion for a preliminary injunction seeking to enforce its register...

TRADEMARK—TTAB: Opposer to a registration may amend complaint to add later registrations
January 18, 2022
Deirdre Kennedy, J.D.

The amendments and supplementations were not made in bad faith, nor did they cause any undue prejudice. The opposer to an application to register the mark READY4LIFE, who alleged that it would likely be confused with its mark READY FOR LIFE, was perm...

Intellectual Property

TOP STORY—Fed. Cir.: Summary judgment of noninfrigement reversed in firearm magazine dispute

The trial court erred in the construction of the claim term “magazine catch bar.” The claim term “magazine catch bar” could not be construed to exclude magazine catch bars installed by the factory in a dispute about replacement magazine systems, the ...

TOP STORY—Fed. Cir.: Summary judgment of noninfrigement reversed in firearm magazine dispute
NOTE TO SUBSCRIBERS
January 14, 2022

IP Law Daily will not publish Monday, January 17, due to the Martin Luther King, Jr. Day holiday. We will resume publication on Tuesday, January 18, with the extensive coverage you’ve come to expect. Info

COPYRIGHT—N.D. Cal.: New registrations can’t resuscitate a claim for statutory damages in a continuing infringement case, court holds
January 14, 2022
Matthew Hersh, J.D.

Because the gaming platform and game maker failed to register their works before the infringement began, they could not salvage their claim for statutory damages by registering while the infringement continued. A federal district court in San Jose, C...

PATENT—Fed. Cl.: Indefiniteness affirmative defense not waived because brought after claim construction.
January 14, 2022
Kevin M. Finson, J.D.

An affirmative defense of invalidity was not waived because not introduced until after claim construction because the Court’s patent rules explicitly set out that invalidity contentions would be resolved separately from claim construction. The defens...

TRADEMARK—TTAB: Board rejects opposer’s reconsideration motion, reminds all that timing really is everything
January 14, 2022
Nicole L. Chaney, J.D.

The Board first denied the opposer’s motion for summary judgment as untimely and reiterated that conclusion by denying its request for reconsideration. In an opposition proceeding, the Trademark Trial and Appeal Board has denied opposer Lumber Liquid...

COPYRIGHT NEWS: ‘Weird But True’: An artist in a fast-food wrapper dress targets National Geographic
January 14, 2022
Matthew Hersh, J.D.

The venerable publication is accused of purloining the offbeat photo for a popular series of children’s books. In a lawsuit that appears likely to test the limits of the “fair use” defense when it comes to the use of photos posted on social media, a ...

TRADE SECRETS NEWS: Former Acting DHS Inspector General admits to stealing government software, personal data
January 14, 2022
Cheryl Beise, J.D.

While employed as government watchdog, Charles Edwards stole sensitive government databases to build a commercial case management system. Charles K. Edwards, a former Acting Inspector General for the U.S. Department of Homeland Security, Office of In...

Intellectual Property

TOP STORY—D. Nev.: Oracle wins $600,000 sanctions against Rimini street for violating permanent injunction

Among the support company’s violations were its failure to quarantine Oracle files mistakenly sent to it by clients and its sending of Oracle files from one customer to another. Software support provider Rimini Street must pay Oracle over $600,000 in...

TOP STORY—D. Nev.: Oracle wins $600,000 sanctions against Rimini street for violating permanent injunction
COPYRIGHT—S.D. Ga.: In one of the final Liebowitz cases, court refuses to grant attorney fees
January 13, 2022
Matthew Hersh, J.D.

Because the photographer represented by the now-disgraced copyright attorney rushed headlong into a lawsuit without making any effort to resolve the claim out of court, no award was justified. A photographer who was represented by a notorious and now...

COPYRIGHT—S.D.N.Y.: Transfer granted to consolidate with duplicative declaratory judgment suit
January 13, 2022
Kevin M. Finson, J.D.

The first filed rule required transfer of a copyright case for consolidation with another duplicative case because both concerned the sale of the same allegedly infringing products and ownership of the same copyright. Transfer to the Northern Distric...

PATENT—W.D. Tex.: Apple fails to secure dismissal of suit alleging infringement of biometric security patents
January 13, 2022
Kevin M. Finson, J.D.

A patent holderls claims that Apple’s iPhone and iPad products infringed its patents stated a claim for direct and indirect infringement because, with the exception of one patent, the complaint laid out a theory which was plausible and depended on a ...

BLOG TRACKER—Noteworthy blog posts and other commentary
January 13, 2022
WK Editorial Staff

The week’s most insightful, intriguing, or entertaining blog posts regarding intellectual property issues: Patently-O,Federal Circuit Dataset & Stats: 2021 Update , by Jason Rantanen (University of Iowa College of Law) Technology & Marketing Law Blog...

PATENT NEWS: Senate Judiciary Committee advances Biden nominees for USPTO, Federal Circuit
January 13, 2022
Cheryl Beise, J.D.

Kathi Vidal and Judge Leonard Stark received broad bipartisan support in committee. The Senate Judiciary Committee today voted 17-5 to confirm Katherine (Kathi) Vidal as Under Secretary of Commerce for Intellectual Property and Director of the USPTO....

Intellectual Property

TOP STORY—E.D. Va.: Say cheese: No geographical trademark protection for the term ‘Gruyere’

Because the term was no longer recognized by American consumers for cheese originating exclusively in France or Switzerland, the term had become generic. The Trademark Trial and Appeal Board correctly found that the word GRUYERE was not entitled to g...

TOP STORY—E.D. Va.: Say cheese: No geographical trademark protection for the term ‘Gruyere’
COPYRIGHT—E.D. Va.: Copyright infringement lawsuit between software security companies to continue
January 12, 2022
Ursula Furi-Perry, J.D.

Copyright misuse constitutes an affirmative defense, but not an affirmative claim; however, a justiciable controversy existed, and the ability to enforce a forum-selection clause was waived. A software security company filed a claim for declaratory j...

PATENT—Fed. Cl.: Patent action reinstated against U.S. government over image processing and target detection system
January 12, 2022
Cheryl Beise, J.D.

Court’s prior finding that asserted patent was invalid as anticipated was erroneous. The U.S. Court of Federal Claims has reinstated patent infringement claims against the United States government for unauthorized use of technology involving automate...

PATENT—Fed. Cir.: Split verdict in semiconductor testing device royalty case reversed in part
January 12, 2022
Kevin M. Finson, J.D.

Damages for inventor’s breach of a royalty agreement was reversed on statute of limitations grounds. An award of damages for breach of contract against an inventor who breached a royalty agreement was reversed on statute of limitations grounds by the...

TRADE SECRETS—N.D. Ill.: Bank fails to sufficiently plead trade secret misappropriation against former emplyees
January 12, 2022
Kevin M. Finson, J.D.

A claim of trade secret misappropriation was insufficient without allegations of fact to show actual use of the allegedly misappropriated customer list. A bank which claimed its employees took customer lists to a competitor failed to plead misappropr...

COPYRIGHT NEWS: Creator of ‘The Walking Dead’ hit with lawsuit over his latest comic book adaptation
January 12, 2022
Matthew Hersh, J.D.

The lawsuit alleges that the comic book author and TV producer bilked a co-author out of his share of profits for Invincible, the comic recently adapted for Amazon Prime. The creator of The Walking Dead and several other hit television series defraud...