IP Law Daily, WORTH NOTING—Other IP law developments, (Sep 22, 2023)

By WK Editorial Staff

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

TRADEMARK—2d Cir: A New York federal district court properly dismissed a trademark cancellation claims for lack of subject matter jurisdiction, the U.S. Court of Appeals for the Second Circuit has ruled. Under Nike, Inc. v. Already, LLC, 663 F.3d 89 (2d Cir. 2011), aff’d sub nom. Already, LLC v. Nike, Inc ., 568 U.S. 85 (2013), a request for trademark cancellation under 15 U.S.C. § 1119 does not provide an independent basis for jurisdiction, and the case must be dismissed unless there is a separate controversy that provides a basis for federal jurisdiction. The complaint in this case did not allege that the defendants had infringed the plaintiff’s mark or present any claim or defense related to registration of the defendants’ trademark. Nor was there any indication of threatened litigation relating to the relevant mark (George & Co., LLC v. Spin Master Corp., September 18, 2023, Carney, S.).

COPYRIGHT OFFICE NEWS: The U.S. Copyright Office said it is extending the deadline to submit comments in connection with a study of the copyright law and policy issues raised by artificial intelligence (AI) systems. Written comments for the Notice of Inquiry published at 88 Fed. Reg. 59942 on August 30, 2023, must now be received by October 30, 2023. Responses are due by November 29, 2023 (88 Fed. Reg. 65205, September 21, 2023).

PATENT NEWS: The Department of Justice announced that it has reached a $1.5 million settlement with Yale University and a professor, Dr. John Krystal, to settle False Claims Act and common law allegations that they failed to disclose certain patents and failed to share patent royalties with the Department of Veteran Affairs (VA) for inventions made by Dr. Krystal when he worked for both institutions. Beginning in March 2006, Dr. Krystal and four co-inventors applied for several patents related to the use of intranasal ketamine for treatment of depression and suicidal ideation. In February 2015, Yale and Dr. Krystal began receiving royalty payments arising from the three ketamine patents that were funded by the VA. The United States alleged it never received royalty payments from the three patents, totaling more than $3 million. As part of the settlement, Dr. Krystal agreed to forego any entitlement to share in the settlement paid to VA, pursuant to rights that he would otherwise have as a VA employee inventor.

USPTO NEWS: USPTO Director Kathi Vidal has announced that that the agency has issued new memo guidance on Patent Trial and Appeal Board (PTAB) and Trademark Trial and Appeal Board (TTAB) paneling procedures. The Guidance on Paneling of Cases directs PTAB and TTAB management to avoid empaneling a judge on a case if the judge or the judge’s spouse or minor children holds stock or bonds (publicly traded or privately held) in any of the disclosed parties or real parties in interest, regardless of the dollar value. “This new paneling guidance is separate from existing ethics standards and does not in any way alter the ethics standards that apply to PTAB and TTAB judges,” the guidance states. “It is intended to avoid paneling judges in a way that might elicit concern, even if they are in full compliance with all ethics statutes and regulations.” The guidance will take effect in 60 days and will apply to all proceedings that are paneled on or after that effective date.

USPTO PATENT NEWS: The USPTO has announced that that it is eliminating the postal postcard as an option for all Patent Center Electronic Office (e-Office) Action program users. The USPTO furnishes a courtesy postcard to Patent Center e-Office Action program users as a reminder when there are available USPTO communications that have not been viewed or downloaded after a period of time. Instead of postcards sent by the United States Postal Service (postal postcards), these courtesy reminders will be sent by email (e-postcards). The USPTO will continue to mail postal postcards for seven days after October 20, 2023, for any unviewed correspondence in the queue as of October 20, 2023, for those program users who were receiving postal postcards prior to that date (88 Fed. Reg. 64889, September 20, 2023).

Attorneys: Christopher A. Zampogna (Zampogna, PC) for George & Co. LLC. Justin Lewis Bernstein (Greenberg Traurig, LLP) for Spin Master Corp. and Spin Master Ltd.

Companies: George & Co. LLC; Spin Master Corp.; Spin Master Ltd.

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