Intellectual Property

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Intellectual Property

TOP STORY—D. N.M.: Trolling the troll: A rare defense of copyright misuse moves forward

The defense alleged a scheme to lure people into unwitting acts of infringement. A real estate firm that was sued for the allegedly unlawful use of a photo of the Albuquerque skyline was entitled to move forward with a little-used defense that the ph...

TOP STORY—D. N.M.: Trolling the troll: A rare defense of copyright misuse moves forward
PATENT—E.D. Tex.: Court construes banking and account management patents
May 23, 2022
Brian Craig, J.D.

The court construed “banking institution” as “a financial entity which comprises at least a bank ” rather than a bank insured by the FDIC. In a patent infringement case brought against TD Ameritrade and Charles Schwab relating to banking and account ...

PATENT—Fed. Cir.: Evidence supported PTAB finding medical device patent invalid as obvious
May 23, 2022
Linda O’Brien, J.D., LL.M.

Petitioner expert testimony in inter partes review of a surgical tool patent was more credible than patent owner’s expert that a person of ordinary skill in the art would have been motivated to combine asserted prior art and would have had a reasonab...

PATENT—Fed. Cir.: Western District of Texas ordered to transfer three cases to the Northern District of California
May 23, 2022
Kevin M. Finson, J.D.

The Western District of Texas abused its discretion by denying three motions to transfer patent cases because no significant witnesses or evidence were to be found in Texas. In three patent infringement suits brought by the same patentee, it was an a...

TRADE SECRETS—N.D. Tex.: Suit can continue in Texas district court against The Points Guy for using American Airlines intellectual property
May 23, 2022
Donielle Tigay Stutland, J.D.

A Texas district court concluded that the venue is appropriate because the servers that house the data that was allegedly misappropriated were within the district, and there is subject matter jurisdiction over the parent company. The Northern Distric...

TRADEMARK—TTAB: Registration denied when mark for fabrics shown used only with finished garments
May 23, 2022
Kevin M. Finson, J.D.

A refusal to register was affirmed because the specimens provided did not show the proposed mark used in connection with any of the identified goods. A manufacturer of clothing did not provide a specimen of use of its proposed mark used in connection...

Intellectual Property

TOP STORY—9th Cir.: Vaping products maker can enjoin wholesaler from counterfeiting products containing cannabinoid

The 2018 Farm Bill—which carved hemp out of the definition of marijuana—made products containing the Delta-8 THC isomer legal, which meant marks for the products could be federally protected. A manufacturer of e-cigarette and vaping products was enti...

TOP STORY—9th Cir.: Vaping products maker can enjoin wholesaler from counterfeiting products containing cannabinoid
PATENT—9th Cir.: Little-known patent investor earns fresh review of discovery request from Apple
May 20, 2022
Matthew Hersh, J.D.

The trial court was too quick to deny discovery in aid of a German tribunal. An Australian technology investment company—entrepreneur to some, “troll” to others—will be entitled to a fresh look at its request that a trial court in California authoriz...

PATENT—Fed. Cir.: Microsoft Dynamic Data tool infringed patent for interface generation method
May 20, 2022
Thomas Long, J.D.

The accused product carried out all of the required method steps “automatically,” even though some ancillary tasks needed to be done by a human. A software development tool made and sold by Microsoft Corporation performed all of the claimed steps of ...

PATENT—Fed. Cir.: Mitek’s declaratory judgment action against USAA reinstated in Texas court
May 20, 2022
Cheryl Beise, J.D.

The district court failed to adequately analyze the effect of USAA’s direct infringement suits against Mitek customers. The federal district court in Marshall, Texas, erred in dismissing a declaratory judgment suit filed by software developer Mitek S...

PATENT—N.D. Ala.: Replacement of broken endoscope lens assembly was permissible repair of patented goods
May 20, 2022
Kevin M. Finson, J.D.

The alleged infringement was based on the repair of articles sold by the patentee, not reconstruction or the production of new goods. A company in the business of repairing endoscopes did not infringe the manufacturer’s patents as a matter of law, th...

TRADEMARK—TTAB: Mark containing ‘Will and Kate’ would not mislead consumers of photography services
May 20, 2022
Patricia K. Ruiz, J.D.

Will and Kate Photography referred to the owners of the business, not the famous royal couple. The Trademark Trial and Appeal Board (Board) reversed an Examining Attorney’s refusal to register the mark WILL AND KATE PHOTOGRAPHY on the ground that it ...

Intellectual Property

TOP STORY—S.D.N.Y.: First Amendment applies to digital tokens for ‘fur-covered Birkin handbag’

But Hermes, maker of the famous luxury Birkin handbags, still met the legal threshold to maintain a trademark infringement lawsuit against the NFT seller. A lawsuit alleging that an online entrepreneur infringed on the rights of a famous line of luxu...

TOP STORY—S.D.N.Y.: First Amendment applies to digital tokens for ‘fur-covered Birkin handbag’
PATENT—Fed. Cir.: PTAB erred in Google case when it failed to make findings on which testimony to believe
May 19, 2022
Robert B. Barnett Jr., J.D.

The Board’s job was to decide which of the conflicting statements to credit, and it erred when it chose instead to disregard one of the positions for lack of corroboration. The U.S. Court of Appeals for the Federal Circuit has reversed a Patent Trial...

PATENT—Fed. Cir.: Evidence supported obviousness of surgical ‘endocutter’ patent claims
May 19, 2022
Kevin M. Finson, J.D.

PTAB’s findings were based on expert testimony and uncontroverted prior art references. Substantial evidence supported the Patent Trial and Appeal Board’s finding that challenged claims of a patent directed to soft-start features for surgical instrum...

TRADEMARK—TTAB: SALEQUICK.COM refused registration for e-commerce payment gateway
May 19, 2022
Linda Panszczyk J.D.

The balance of factors weighed in favor of finding a likelihood of confusion with the mark QUICKSALE. The Trademark Trial and Appeal Board affirmed an Examining Attorney's refusal to register the composite mark SaleQuick.com for an “Application servi...

BLOG TRACKER—Noteworthy blog posts and other commentary
May 19, 2022
WK Editorial Staff

The week’s most insightful, intriguing, or entertaining blog posts regarding intellectual property issues. Patently-O, The Inventive Entity and Prior Publication by Another , by Dennis Crouch (University of Missouri School of Law) IP Watchdog, Nike’s...

COPYRIGHT NEWS: European Commission takes further action against 13 member states for failure to implement EU directives
May 19, 2022
Cheryl Beise, J.D.

The noncompliant member states face referral to the EU Court of Justice and potential monetary penalties. The European Commission on May 19 announced that it has sent “reasoned opinions” to several member states that have failed to incorporate EU cop...

Intellectual Property

TOP STORY: Final regulations in place for launch of Copyright Office small claims court

The last version of rule-making aims to ensure that the tribunal will be accessible to parties without lawyers. Pro se parties should have an easier time navigating low-dollar copyright cases if regulations published on May 17 have their intended eff...

TOP STORY: Final regulations in place for launch of Copyright Office small claims court
COPYRIGHT—D.N.J.: Copyright infringement suit can proceed against the publisher but not against the author
May 18, 2022
Robert B. Barnett Jr., J.D.

The court found sufficient contacts with the California publisher to exercise personal jurisdiction but not with the Arizona author of the allegedly infringing book. The New Jersey federal district court has specific personal jurisdiction to hear a c...

PATENT—D. Del.: Cisco must pay interest on enhanced damages awarded to SRI from May 2017 judgment
May 18, 2022
Cheryl Beise, J.D.

Two appeals to the Federal Circuit and subsequent remand rulings did not alter the “legal basis” for the original 2017 judgment. Cisco Systems must pay post-judgment interest on enhanced patent infringement damages awarded to SRI International, Inc.,...

TRADEMARK—TTAB: CASA DE NOVELAS for sunglasses rejected as too similar to NOVELLA for eyeglass lenses
May 18, 2022
Robert B. Barnett Jr., J.D.

Registration of the mark CASA DE NOVELAS for fashion sunglasses was rejected because of a likelihood of confusion with existing mark NOVELLA for prescription lenses. The mark CASA DE NOVELAS for designer sunglasses was properly refused registration b...

TRADEMARK—TTAB: FLEXA CAPACITY for crypto services confusable with CAPACITY
May 18, 2022
Jonathan Anderson

The Trademark Trial and Appeal Board has affirmed the trademark examining attorney’s refusal to register the standard character mark FLEXA CAPACITY in connection with cryptocurrency exchange services on the ground of likelihood of confusion with the ...

TRADEMARK—D. Kan.: Jurisdiction and venue proper in architectural composite dispute
May 18, 2022
Kevin M. Finson, J.D.

Specific personal jurisdiction over a nonresident corporation that entered into an ongoing business relationship in the forum state. A maker of lightweight architectural composite material made at least a prima facie showing of personal jurisdiction ...

Intellectual Property

TOP STORY—Fed. Cir.: Claim for “scalable address” in remote control system erroneously construed by PTAB

Patentability findings in PTAB’s inter partes review regarding a system that monitors and controls remote systems were based on erroneous constructions of “scalable address” and “scalable address field” claims. A decision by the Patent Trial and Appe...

TOP STORY—Fed. Cir.: Claim for “scalable address” in remote control system erroneously construed by PTAB
TRADE SECRETS—N.D. Cal.: Tesla fails to obtain TRO in data theft suit against former employee
May 17, 2022
Robert B. Barnett Jr., J.D.

The court characterized Tesla’s TRO application as without merit, ruling that Tesla had failed to show a likelihood of success on the merits of its trade secrets misappropriation claims. In a suit by Tesla alleging that a short-term employee stole tr...

TRADEMARK—9Th Cir.: Confusion implausible after ASU marks, trade dress used in profane Instagram posts
May 17, 2022
Patricia K. Ruiz, J.D.

A reasonable consumer would not likely believe the Instagram posts were made by Arizona State University. The Ninth Circuit upheld a decision by the District of Arizona finding no likelihood of confusion or deceit when an Instagram account used the m...

TRADEMARK—TTAB: CLOVER CLUB confusable with CLOVER, but some related marks not confusing
May 17, 2022
Jonathan Anderson

The number and nature of similar marks in use for similar services weighed against finding a likelihood of confusion, dispositively so for two marks with additional peripheral elements. The Trademark Trial and Appeal Board has affirmed in part and re...

TRADEMARK—TTAB: DIGITAL VISUAL OBSERVER mark was merely descriptive of cameras and aerial drone equipment.
May 17, 2022
Kevin M. Finson, J.D.

The identified goods in the proposed mark consisted of digital technology which performed some of the functions of a human visual observer on a drone flight crew. A maker of cameras and related equipment for use with drones failed to show that its pr...

COPYRIGHT NEWS—Fate of art installations in lower Manhattan to be the subject of a hearing this week
May 17, 2022
Matthew Hersh, J.D.

The artists contend the installations would face destruction under a controversial development plan for city jails Two artists who contend that their art installations are “in immediate peril of destruction” due to a controversial development plan sc...