Intellectual Property
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...
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...
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...
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...
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...
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...
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...
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...
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...
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...
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...
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...
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...
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...
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...
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 ...
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 ...
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...
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...
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 ...
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...
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...
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...
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...
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...
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...