Other Barks & Bites for Friday, May 15: SCOTUS Rules in Trademark Defense Preclusion Case, CAFC Extends Arthrex to Reexams, EPO Enlarged Board of Appeal Issues Ruling on Patentability

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https://depositphotos.com/6113467/stock-photo-shar-pei-dog-with-newspapers.htmlThis week in Other Barks & Bites: the Supreme Court finds that Lucky Brand Dungarees isn’t precluded from asserting new defenses under federal preclusion principles; the Federal Circuit issues decisions extending Arthrex to inter partes reexaminations and affirming a willful infringement verdict, despite a lack of Article III standing by the plaintiff when the suit was filed; the EPO Enlarged Board of Appeal says plants and animals derived from essentially biological processes are not patentable; USPTO publishes the requirements for participants in its COVID-19 priority examination pilot; Taiwan Semiconductor announces a $12 billion facility to be built in Arizona; the Second Circuit clarifies instances when individuals unnamed in group registrations can pursue infringement claims on individual works within the group; and the Eleventh Circuit reverses a lower court’s trademark ruling on lack of distinctiveness.


Supreme Court Says Trademark Settlement Agreement Not Precluded as Defense – On Thursday, May 14, the U.S. Supreme Court issued a decision in Lucky Brand Dungarees v. Marcel Fashions Group, in which the nation’s highest court found that federal claim preclusion principles do not prevent Lucky Brand Dungarees from asserting a trademark settlement agreement as a defense against infringement because it wasn’t raised in an earlier suit between the parties.

EPO Enlarged Board of Appeal Issues Ruling on Patentability of Plants and Animals – The Enlarged Board of Appeal of the European Patent Office issued opinion G 3/19 (Pepper) on May 14, concluding that plants and animals exclusively obtained by essentially biological processes are not patentable. IPWatchdog will have a full report on the decision soon.

CAFC Affirms Summary Judgment Dismissing Infringement Claims Over Chalk Pencil – On Thursday, May 14, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Lanard Toys Limited v. Dolgencorp LLC in which the appellate court affirmed the Middle District of Florida’s grant of summary judgment dismissing design patent, trademark and trade dress infringement filed by Lanard targeting sales of a toy chalk holder shaped like a pencil. The CAFC agreed with Middle Florida that Lanard’s design patent claims extended the scope of the patented design well past the ornamental design covered by the patent, and that the chalk pencil was a useful article not protectable under U.S. copyright law.

Eleventh Circuit Reverses Southern Florida on Lack of Distinctiveness – On Thursday, May 14, the U.S. Court of Appeals for the Eleventh Circuit issued a decision in Engineered Tax Services v. Scarpello Consulting in which the appellate court reversed a ruling from the Southern District of Florida after determining that a reasonable jury could find the trademark “Engineered Tax Services” could be distinctive.

CAFC Affirms Delivery Notification Patent Claims Ineligible Under Section 101 – On Thursday, May 14, the Federal Circuit issued a precedential decision in Electronic Communication Technologies v. ShoppersChoice.com in which the appellate court affirmed a finding by the Southern District of Florida which invalidated patent claims covering a system for delivery notifications after finding that claims were directed to the abstract idea of “providing advance notification of the pickup or delivery of a mobile thing.”

CAFC Extends Arthrex to Inter Partes Reexamination – On Wednesday, May 13, the Federal Circuit issued an order denying petitions for rehearing in VirnetX v. Cisco Systems in which the appellate court found that its prior ruling in Arthrex v. Smith & Nephew allowed parties to remand cases to the Patent Trial and Appeal Board (PTAB) for constitutional challenges under the Appointments Clause to inter partes reexaminations, which are similar in nature to the inter parties review (IPR) proceedings at issue in Arthrex.

https://depositphotos.com/13561580/stock-illustration-beware-of-dog.htmlDivided CAFC Panel Affirms Willful Infringement Verdict Against Arkwright – On Wednesday, May 13, the Federal Circuit unsealed a precedential decision issued the previous week in Schwendimann v. Arkwright Advanced Coating in which the appellate court affirmed a jury verdict from the District of Minnesota finding that Arkwright had willfully infringed patent claims asserted by Schwendimann. Circuit Judge Jimmie Reyna filed a dissenting opinion in which he argued that the majority improperly forgave Schwendimann’s lack of Article III standing at the time that the suit was filed.

Second Circuit Clarifies Group Registrations in Photo Copyright Case – On Tuesday, May 12, the U.S. Court of Appeals for the Second Circuit issued a decision in Sohm v. Scholastic in which the appellate court reversed in part a decision by the Southern District of New York which had allowed Sohm to recover damages for a period of time greater than the three year limit established by the Copyright Act. The court also clarified that group registrations properly registered with the Copyright Office also register individual copyrights for works within the group even if the individual work’s author is not named in the group registration.

CAFC Dismisses Non-Infringement Appeal, Finds No Dedication-Disclosure Doctrine Error – On Friday, May 8, the Federal Circuit issued a precedential decision in Eagle Pharmaceuticals v. Slayback Pharma in which the appellate court affirmed a judgment of no patent infringement entered by the District of Delaware. Eagle Pharmaceuticals had argued that the district court improperly applied the dedication-disclosure doctrine by finding that its asserted patent claims disclose but do not claim the use of ethanol as a pharmaceutically acceptable fluid, thus dedicating that use to the public.



USPTO Publishes Requirements for COVID-19 Priority Examination Pilot – On Thursday, May 14, the U.S. Patent and Trademark Office published a notice in the Federal Register listing requirements and procedures related to the agency’s priority examination pilot program announced last week for patent applications covering a product or process related to COVID-19.

Ninth Circuit Says Infringement Invokes Copyright Act for Attorney’s Fees Award – On Wednesday, May 13, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Doc’s Dream v. Dolores Press in which the appellate court vacated an order from the Central District of California which had dismissed a motion seeking attorney’s fees. The Ninth Circuit held that claims for declaratory relief which still turn on the existence of a valid copyright invokes the Copyright Act and gives the district court discretion to award attorney’s fees.

CAFC Gives Sprint Another Crack at PTAB Over Erroneous Claim Construction – On Wednesday, May 13, the Federal Circuit issued a decision in Sprint Spectrum v. General Access Solutions in which the appellate court vacated the PTAB’s claim construction related to patent claims covering a wireless data system for dynamically directing bandwidth to subscribers within a certain area, finding that the Board erroneously construed claim terms at issue.

PTAB Denies IPR Challenging Remote Check Deposit Patent – On Wednesday, May 13, the Patent Trial and Appeal Board (PTAB) issued a decision denying institution to an inter partes review (IPR) proceeding filed by Wells Fargo challenging the validity of patent claims owned by the United States Automobile Association and covering methods of imaging a check with a mobile device using Magnetic Ink Character Recognition so that consumers can remotely deposit checks into financial accounts.

https://depositphotos.com/30633387/stock-illustration-postman-followed-by-a-dog.htmlTrade Secret, Fraud Case Against OncoGenerix Survives Motion to Dismiss – On Wednesday, May 13, U.S. District Judge Jorge Alonso of the Northern District of Illinois denied a motion to dismiss trade secret and fraud claims filed by Meridian Laboratories against OncoGenerix over allegations that the latter misrepresented its ability to develop a cancer treatment covered by a production agreement between the two companies.

Chinese Drone Giant DJI Gets PTAB to Nix Autonomous Vehicle Patent Claims – On Wednesday, May 13, the PTAB issued a pair of final written decisions in IPR proceedings petitioned by SZ DJI Technology, the world’s largest producer of consumer drones, finding unpatentable all of the challenged claims owned by Autel Robotics and covering sensor systems for adjusting vehicle speed in response to sensed conditions.

Attorney Training Institute Files Trademark Suit Against Founder – On Wednesday, May 13, the Trial Lawyers College, a non-profit organization providing training and education to lawyers, filed a lawsuit in the District of Wyoming against its founder Gerald Spence, alleging that Spence is using trademarks registered by the institute to start a competing program after a rift with the institute’s board of directors.

Colorado District Court Creates Genuine Artistic Motive Test in Wild America Trademark Case – On Friday, May 8, U.S. District Judge William Martinez of the District of Colorado issued a ruling dismissing a trademark case filed against National Geographic over the production of a nature documentary series. Judge Martinez rejected the Rogers test as inappropriate for balancing the trademark and First Amendment concerns in the case and instead applied a novel genuine artistic motive test.

This Week on Wall Street

French Authorities Increase Pressure Against Sanofi Over COVID-19 Vaccine – On Friday, May 15, CNN reported that French authorities have asked Sanofi CEO Paul Hudson to attend a meeting next week to discuss the availability of a COVID-19 vaccine currently under development by Sanofi after Hudson made remarks indicating that the U.S. would be the first country to receive doses of any such vaccine developed by Sanofi.

Taiwan Semiconductor Announces $12B Plant Project in Arizona – On Friday, May 15, Taiwan Semiconductor Manufacturing Co. announced a project to build a semiconductor manufacturing plant in Arizona with plans to spend $12 billion on the project which is expected to create 1,600 jobs.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2018 are announcing quarterly earnings next week (2018 rank in parentheses):

  • Monday: Panasonic Corp. (224th); Terumo Corp. (t-251st)
  • Tuesday: Sharp Corp. (58th); Lenovo Group (t-173rd); Shimadzu Corp. (t-251st)
  • Wednesday: None
  • Thursday: Hewlett Packard Enterprise (80th); Intuit, Inc. (t-287th); Medtronic Inc. (25th)
  • Friday: Casio Computer Co. Ltd. (t-147th); Deere & Co. (t-123rd); Fujifilm Corp. (55th)


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