IP Law Daily, WORTH NOTING—Other IP law developments, (Jul 26, 2024)

By WK Editorial Staff

A periodic roundup of other items of interest to the Intellectual Property community:

PATENT—Fed. Cir.: Futaba Corporation of America (“FCA”) was not entitled to a writ of mandamus directing the United States District Court for the Western District of Texas (“WDTX”) to dismiss or stay a patent and copyright infringement action filed by UUSI, LLC (“Nartron”) pending a ruling on its motion to dismiss for improper venue under 28 U.S.C. § 1406(a) and lack of personal jurisdiction. In response to that motion, Nartron sought leave to amend the complaint to add FCA’s parent company, Futaba Corporation, as a party and to add allegations against a Futaba affiliate with a place of business in WDTX. On June 20, 2024, the district court issued an order granting FCA’s motion for leave to amend its complaint and a separate order deeming FCA’s motion to dismiss the previous complaint moot. In light of these orders, the court deemed its immediate intervention was unwarranted (In Re Futaba Corp. Of America, No. 24-131 (Fed. Cir. July 22, 2024)).

FEDERAL CIRCUIT NEWS—The Special Committee appointed by Federal Circuit Chief Judge Kimberly Moore on July 24 released a 97-page Report and Recommendation (Complaint No. 23-90015) proposing an additional one-year suspension from hearing cases for Circuit Judge Pauline Newman until the 97-year old judge cooperates with the Committee and complies with its prior orders to undergo specified medical examinations and provide medical records relating to her fitness to perform the duties of her office. This would be the second year of suspension for Judge Newman. The Committee submitted an order to show cause for a continued sanction on May 29, 2024. Judge Newman previously provided her own medical report purporting to show her competence, but the Special Committee found the report was inadequate and entitled to no weight. Documents in this matter can be found on the Federal Circuit’s Judicial Conduct and Disability webpage. In May 2023, Judge Newman filed complaint in the federal district court in Washington, D.C., against the Special Committee members (Chief Judge Moore and Circuit Judges Prost and Taranto) and the Judicial Council of the Federal Circuit, seeking declaratory and injunctive relief to prevent Judge Newman’s removal from her position on the court. Two weeks ago, the court granted the defendants’ motion to dismiss the case.

USPTO TRADEMARK NEWS: The USPTO is proposing to retain current response deadlines for post-registration office actions. The current response period is either six months or the end of the one-year period for filing the relevant maintenance document, whichever is later. The Trademark Modernization Act of 2020 provided the USPTO with the authority to establish new response periods and extensions in the examination of post-registration filings. The Office postponed implementing this post-registration change in a final rule published in September 2023 but continued to study the issue. “Upon further examination, we’ve determined that a significant portion of trademark owners would not be subject to the shortened response period,” the Office said. “Additionally, we believe the new deadlines could confuse registrants and lead them to file unnecessary extension requests. If registrants do not calculate deadlines correctly, their registrations could be unintentionally canceled. Consequently, we believe that any potential benefit from the shortened response periods is minimal, while potential confusion is likely.” Comments on the proposal are due August 19, 2024 (89 Fed. Reg. 58660, July 19, 2024).

TRADE SECRETS NEWS: A nail polish seller has filed a petition asking to Supreme Court to review a decision of the U.S. Cour of Appeals for the Seventh Circuit staying a trade secrets case filed in the federal district court of Chicago pending resolution of corporate ownership issues by a New Jersey state court proceeding. The petition asks, “Whether the Seventh Circuit erred in affirming the district court’s stay of federal proceedings under the Colorado River doctrine when substantial doubt exists as to whether the state court proceedings will fully resolve the federal action, deepening a conflict among circuits on the necessity of exact parallelism between state and federal proceedings” (Gelab Cosmetics LLC v. Zhuhai Aobo Cosmetics Co., Ltd., No. 24-77 (U.S. July 22, 2024)).

Attorneys: George S. Fish (Young Basile Hanlon MacFarlane, P.C.) for Futaba Corp. of America. Lawrence Milton Hadley (Glaser Weil Fink Howard Jordan & Shapiro LLP) for UUSI, LLC d/b/a Nartron. Tianyu Ju (Glacier Law LLP) for GeLab Cosmetics LLC.

Companies: Futaba Corp. of America; UUSI, LLC d/b/a Nartron; GeLab Cosmetics LLC; Zhuhai Aobo Cosmetics Co., Ltd.

News: Patent Trademark TradeSecrets FedCirNews USPTO