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SCOTUS Rules “Generic.com” Marks Are Eligible For Federal Trademark Protection

July 7, 2020 | Blog | By Susan Neuberger Weller, Vincent Ferraro

In a landmark decision, United States Patent and Trademark Office v. Booking.com B.V., the Supreme Court of the United States, by an 8-1 vote, affirmed the lower court’s determination that Booking.com could register BOOKING.COM as a trademark. 
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Filling the Hole with Common Sense: When Evidentiary Support is Adequate

July 6, 2020 | Blog | By Peter Cuomo, Serge Subach

The Federal Circuit recently reaffirmed a case where common sense was used to supply a missing element in a § 103 obviousness analysis.  On June 26, 2020, the Federal Circuit issued a decision in B/E Aerospace, Inc. v. C&D Zodiac, Inc., Nos. 2019-1935, 2019-1936 (Fed. Cir. Jun. 26, 2020) (“B/E Aerospace”) affirming a Patent Trial and Appeal Board (“PTAB”) final written decision finding patent claims invalid in view of a combination of prior art and common sense.
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Judge Albright of the Western District of Texas (“WDTX”) recently rejected yet another attempt by Apple to transfer a patent case to the Northern District of California (“NDCA”). Judge Albright’s June 19, 2020 order describes how Apple—not plaintiff Uniloc—was attempting to forum shop by seeking to move essentially all of its cases filed in Texas to NDCA. 
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On June 26, 2020, the U.S. District Court for the District of Delaware, in VLSI Tech. LLC. v. Intel Corp, No. 18-0966-CFC, denied VLSI’s motion for leave to amend to add claims for willful infringement of U.S. Patent Nos. 6,212,633 (the “’633 patent”) and 7,523,331 (“the ’331 Patent”) based on pre-suit activity but granted it as to alleged post-suit infringement (which Intel did not oppose).
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Shifting “Sands”: New Facts on the Ground Justify Institution of a Previously-Denied IPR

June 25, 2020 | Blog | By Michael Renaud, Adam Rizk, Daniel Weinger, Serge Subach

In a rare reversal, the Patent Trial and Appeal Board (“PTAB”) reassessed the Fintiv factors in a decision on a petition for rehearing of a previous decision denying institution of an inter partes review (“IPR”).  
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USPTO Releases Final Rules on PTA Calculations in view of Supernus

June 23, 2020 | Blog | By Peter Corless, Carolina Säve

On June 16, 2020, the U.S. Patent and Trademark Office (USPTO) released final rules (the “Rules”) implementing changes to how Patent Term Adjustment (PTA) is calculated in certain circumstances in view of Supernus Pharms., Inc. v. Iancu, 913 F.3d 1351 (Fed. Cir. 2019). 
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Are Design Patents Missing From Your IP Portfolio?

June 23, 2020 | Blog | By Michael Van Loy, Joshua Berk

A design patent protects the visual ornamental characteristics of an article, including consumer and industrial products, medical devices and related tools, sports equipment, jewelry, product packaging, and even web-based and mobile graphical user interfaces and icons.
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The Federal Circuit Broadens Application of the Kessler Doctrine

June 23, 2020 | Blog | By Matthew Hurley, Philip C. Ducker, Adrian Kwan

Last week, the Federal Circuit invoked the Kessler doctrine in ruling that a district court’s dismissal of the plaintiff’s patent infringement suit against Amazon barred the plaintiff’s subsequent lawsuits against Amazon and its customers in In Re PersonalWeb Technologies, Inc.
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In a recent decision from the Second Circuit, Judges Parker, Chin, and Carney side-stepped a novel question: whether human skin can be the kind of "tangible medium of expression" required for copyright protection. Instead, the court held that a photograph of a makeup artist’s application of a makeup design to a human “fixed” the design for purposes of copyright law and affirmed the district court’s dismissal of the appellant Mourabit’s unjust enrichment and unfair competition/misappropriation claims as preempted by the Copyright Act.
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In a recent decision in In Re Humira (Adalimumab) Antitrust Litigation), No. 19-cv-1873, Judge Shah of the Northern District of Illinois dismissed a consolidated class action complaint filed by U.S. purchasers of AbbVie Inc.’s blockbuster biologic drug Humira alleging that AbbVie had prevented manufacturers of competing biosimilar drugs (“biosimilars”) from entering the U.S. market in violation of federal and state antitrust laws.
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No Fishing Allowed: Discovery of Litigation Funding Requires Articulation of Relevance Beyond Speculation

June 18, 2020 | Blog | By Michael Renaud, Andrew DeVoogd, Daniel Weinger, Catherine Xu

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PTAB Designates As Informative a Decision Instituting Post-Grant Review for a Design Patent Lacking Ornamentality

June 16, 2020 | Blog | By Brad M Scheller, Vincent Ferraro, Meena Seralathan

On June 11, 2020, the Patent Trial and Appeal Board (“PTAB”) designated as informative a July 26, 2019 institution decision granting post-grant review of a design patent for lacking ornamentality. In this ruling, the PTAB provides insight into how it analyzes the unpatentability of a design patent due to lack of ornamentality in post-grant proceedings at the institution stage.
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Arbitration of IP Disputes in a Post-COVID-19 World

June 2, 2020 | Blog | By Matthew Hurley, Michael Renaud, Nicholas Armington

The COVID-19 pandemic has caused individuals and companies alike to face the reality of a rapid economic downturn followed by a potentially slow recovery characterized by continued economic challenges.
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First Amendment May Protect Use of Trademarks As Artistic Expression

May 27, 2020 | Blog | By Susan Neuberger Weller, Harold Laidlaw

In a recent decision from the Southern District of New York, Judge George B. Daniels held that the strong First Amendment interests in protecting free artistic expression warranted summary judgment that Activision Blizzard’s use of Humvee vehicle models in the blockbuster Call of Duty videogames was not a violation of the Lanham Act.
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Federal Circuit Appeals Continue as Scheduled Without In-Person Arguments

May 19, 2020 | Blog | By Brad M Scheller, Jessica Perry

Yesterday the United States Court of Appeals for the Federal Circuit released modifications to court procedures, indicating that all in-person oral arguments are suspended until further notice.
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The Patent Trial and Appeal Board (“PTAB”) recently sent a warning to alleged infringers not to wait for the one year deadline to file IPR petitions, or risk discretionary denial.  On May 13, 2020, the PTAB exercised its discretion to deny institution of an inter partes review (“IPR”) petition filed by Apple due to the advanced state of a parallel district court litigation in the Western District of Texas.
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Federal Circuit Upholds Application of Dedication-Disclosure Doctrine at the Pleading Stage

May 15, 2020 | Blog | By Thomas Wintner, Adam Samansky, Nana Liu

On May 8, 2020, the Court of Appeals for the Federal Circuit affirmed the District of Delaware’s application of the disclosure-dedication doctrine in granting a motion for judgment on the pleadings in Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC, No. 19-1924. 
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The United States Supreme Court unanimously held this week that Lucky Brand was not precluded from mounting a new defense in its litigation with Marcel Fashions Group — despite having chosen not to bring up the same defense in a prior litigation.  This ruling clarifies the circumstances under which a defense can be precluded from a lawsuit.
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COVID-19: Prioritized Patent Application Examination and Patents 4 Partnerships

May 15, 2020 | Blog | By Peter Corless, Carolina Säve, Rui Jacques

The United States Patent and Trademark Office (USPTO) has recently launched two new initiatives to support COVID-19 innovations: 1) a COVID-19 Prioritized Examination Pilot Program, and 2) Patents 4 Partnerships that provides a searchable forum to list COVID-19 related published applications and patents available for licensing.
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Federal Circuit Narrows Availability for IPR Appeals Under Arthrex

May 14, 2020 | Blog | By Marc Morley, Jeff Giering

By recognizing a constitutional deficiency in the appointment of Patent Trial and Appeal Board (“PTAB”) judges, the Federal Circuit in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) set the stage for numerous appeals by parties unhappy with a PTAB decision and seeking a do-over with a new panel. 
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