Other Barks & Bites for Friday, August 20: CAFC Reverses PTAB on Soup Dispenser Design Patent Claims, FTC Files New Antitrust Suit Against Facebook and David Berdan Steps in for Coke Stewart in Performing USPTO Deputy Director Role

“Bite” (noun): more meaty news to sink your teeth into.

“Bark” (noun): peripheral noise worth your attention.


This week in Other Barks & Bites: the Federal Circuit issues decisions reversing the PTAB’s nonobviousness ruling on soup dispenser design patent claims challenged by Campbell Soup and finding that the USPTO cannot recoup expert witness fees from patent applicants filing Section 145 lawsuits; USPTO General Counsel David Berdan to step in for Coke Stewart in performing duties of Deputy Director; Chinese tech firm Tencent says its online subscriptions won’t be harmed by a recent copyright edict against its exclusive music license agreements; the Eighth Circuit rules that Section 120(a) does not provide a defense against copyright claims stemming from floorplans depicting a work protected by an architectural copyright; 1-800 Contacts files a trademark suit over Warby Parker’s infringing use of Google Ads; an administrative law judge at the International Trade Commission rules that Google infringed on a series of patents owned by Sonos; the Federal Trade Commisison (FTC) files a new antitrust lawsuit against Facebook; and news reports indicate that Amazon.com is planning to introduce department store locations in Ohio and California.


David Berdan to Perform Functions and Duties of USPTO Deputy Director After Coke Stewart Leaves to Join Law School Faculty – On Tuesday, August 17, the USPTO announced that Coke Stewart, performing the functions and duties of the Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, will be leaving the agency in order to become a faculty member at the Regent University School of Law in Virginia Beach, VA. David L. Berdan, who was appointed General Counsel of the USPTO in November 2020, will take over the role. Deputy General Counsel, Office of General Law, David Shewchuk, will serve as Acting General Counsel while Berdan performs the functions and duties of the Deputy Director.

CAFC Reverses PTAB Nonobviousness Finding on Soup Dispenser Design Patent Claims – On Thursday, August 19, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Campbell Soup Co. v. Gamon Plus, Inc. in which the appellate court reversed a finding of nonobviousness in an inter partes review (IPR) proceeding conducted by the Patent Trial and Appeal Board (PTAB) after finding that asserted prior art creates the same visual appearance and that the PTAB improperly credited evidence of commercial success and evidence of copying the claimed designs.

FTC Files New Antitrust Lawsuit to Break Up Facebook – On Thursday, August 19, the U.S. Federal Trade Commission filed an amended complaint in the U.S. District Court for the District of Columbia alleging that Facebook engaged in an unlawful scheme to buy-or-bury innovative competitors in order to maintain the tech giant’s dominance among online social media platforms. The amended filing comes about a month and a half after the district court dismissed the FTC’s original complaint against Facebook.

USPTO Pushes Comprehensive Trademark Strategy After Scathing OIG Report – On Wednesday, August 18, Drew Hirshfeld, performing the functions and duties of Director of the U.S. Patent and Trademark Office, published a blog post on the USPTO’s Director’s Forum blog discussing the agency’s comprehensive strategy to fight fraudulent trademark filings in the face of a 40 percent year-over-year increase in overall trademark filings. One week prior, the U.S. Commerce Department’s Office of Inspector General (OIG) issued a report finding that the USPTO’s trademark registration process included ineffective safeguards for preventing the registration of marks based on fraudulent applications. 

CAFC Rules That USPTO Cannot Recoup Expert Witness Fees in Section 145 Cases – On Wednesday, August 18, the Federal Circuit issued a precedential decision in Hyatt v. Hirshfeld (Hyatt II) in which the appellate court ruled that 35 U.S.C. § 145, which enables patent applicants appealing examiner rejections to U.S. district court instead of the Federal Circuit, did not enable the USPTO to shift expert witness fees onto patent applicants as part of the “expenses of the proceeding” that are to be paid by the applicant.

Second Circuit Enters Judgment for Patsy’s Brand in Pizzeria Trademark Case – On Tuesday, August 17, the U.S. Court of Appeals for the Second Circuit entered a ruling in I.O.B. Realty, Inc. v. Patsy’s Brand, Inc. in which the appellate court entered judgment for Patsy’s Brand after finding that U.S. District Judge Louis Stanton’s response to a previous remand in the trademark case over “PATSY’S PIZZERIA” marks used among rival New York City restaurateurs did not address the Second Circuit’s request for a basis of authority to enter judgment for I.O.B. directing the USPTO to grant a trademark to that firm.

Ninth Circuit Affirms Disgorgement Limits to Avoid Double Recovery in Coffee Trademark Case – On Tuesday, August 17, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Eko Brands LLC v. Adrian Rivera Maynez Enterprises, Inc. in which the appellate court affirmed limits on a disgorgement award set by the district court for infringement of an “EKOBREW” trademark for refillable coffee cartridges. The Ninth Circuit found that “[t]he district court permissibly structured its award to avoid double recovery” in light of a previous judgment in the case on asserted patent claims.

Eighth Circuit Finds No Section 120(a) Defense to Copyright Claims Over Floorplans – On Monday, August 16, the U.S. Court of Appeals for the Eighth Circuit issued a decision in Designworks Homes, Inc. v. Columbia House of Brokers Realty, Inc. in which the appellate court reversed a district court’s grant of summary judgment after finding that 17 U.S.C. § 120(a), which states that copyrights covering architectural works do not include the right to prevent “pictorial representations of the work,” does not provide a defense to copyright infringement claims regarding the generation of floorplans for potential homebuyers. 

CAFC Affirms Series of IPR Decisions After Teva, Eli Lilly Appeals – On Monday, August 16, the Federal Circuit entered a trio of decisions, two of them precedential, following a series of appeals by pharmaceutical firms Teva and Eli Lilly following final decisions in inter partes review proceedings issued by the Patent Trial and Appeal Board (PTAB). In the precedential decisions, the Federal Circuit struck down Teva arguments that the PTAB erred in analyzing motivation to combine prior art references and secondary considerations of nonobviousness, and dismissed Eli Lilly’s arguments that the PTAB improperly construed claim preambles to require the administration of an antibody with the expectation of results. In the non-precedential decision, the Federal Circuit affirmed that Teva patent claims challenged by Eli Lilly were unpatentable as obvious.



1-800 Contacts Files Trademark Suit Over Warby Parker Online Ad Keywords – On Wednesday, August 18, online contact lens retailer 1-800 Contacts filed a lawsuit in the Southern District of New York against online eyeglasses retailer Warby Parker over that firm’s alleged infringement of 1-800 Contacts’ trademarks in purchasing online ad keywords through the Google Ads online advertising platform.

Judge Albright Enters Order Requiring Status Reports for Inter-District Transfer Motions – On Wednesday, August 18, U.S. District Judge Alan D. Albright of the Western District of Texas entered a second amended standing order regarding motions for inter-district transfer requiring parties filing such motions to provide status reports on whether those motions are fully briefed and ready for resolution four weeks prior to any scheduled Markman hearings in the case. 

Copyright Office Issues Final Rule on Expedited Registrations of Works in Small Claims – On Wednesday, August 18, the U.S. Copyright Office issued a final rule in the Federal Register providing for an expedited registration option for works that are the subject of a claim or counterclaim that has been filed at the Copyright Claims Board, which handles certain small claims under copyright law pursuant to the Copyright Alternative in Small-Claims Enforcement Act of 2020.

Apple Appeals Corellium Copyright Case to Eleventh Circuit – On Tuesday, August 17, consumer device giant Apple filed a notice of appeal seeking to have the U.S. Court of Appeals for the Eleventh Circuit overturn a summary judgment ruling entered last December which cleared security research firm Corellium of direct infringement claims based on virtualized versions of Apple software marketed by the firm.

Register Perlmutter Adjusts Filing Deadlines in Response to Copyright System Outage – On Tuesday, August 17, the Copyright Office announced that Register of Copyrights Shira Perlmutter had exercised her authority to adjust the effective date of registration assigned to certain registration claims affected by a disruption to the Office’s Electronic Copyright System (eCO) that started last Thursday.

Judge Liman Finds No Protectable Interest Over Familial Love in “Proud” Copyright Case – On Monday, August 16, U.S. District Judge Lewis J. Liman of the Southern District of New York entered a ruling granting a motion to dismiss a copyright infringement case filed by Solomon Clanton, a hip-hop artist performing as Slugga, filed against UMG Recordings and hip-hop artists 2 Chainz and Offset after finding that alleged similarities between their 2018 release “Proud” and a 2015 release by Slugga was an unprotectable expression of “familial love or pride or the efforts to instill it.”

USITC ALJ Rules That Google Infringed Sonos Patents, Recommends Import Ban – On Friday, August 13, Administrative Law Judge (ALJ) Charles E. Bullock of the U.S. International Trade Commission issued a preliminary finding in a Section 337 investigation indicating that certain devices imported into the U.S. for sale by Google infringed patents covering speaker technologies and owned by Sonos.

This Week on Wall Street

WSJ Reports on Amazon’s Plans to Open Brick-and-Mortar Department Stores Across U.S. – On Thursday, August 19, The Wall Street Journal reported that e-commerce giant Amazon is developing plans to open a series of 30,000 square-foot department stores across the U.S., with the first retail locations to open in Ohio and California, to increase the company’s brick-and-mortar presence nationwide.

Tencent Shares Pop After Shrugging Off New Chinese Copyright Rules – On Monday, August 16, shares of Chinese entertainment technology firm Tencent increased 3.1 percent after reporting quarterly earnings in part because of statements from company executives indicating that a copyright edict preventing Tencent from engaging in exclusive music licensing agreements is not expected to have major negative impacts on the company’s revenues.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2020 are announcing quarterly earnings next week (2020 rank in parentheses):

  • Monday: None
  • Tuesday: Intuit Inc. (238th); Medtronic plc (28th)
  • Wednesday:com, Inc. (94th); Splunk Inc. (t-232nd); Xiaomi Inc. (213th)
  • Thursday: Dell Technologies (12th); HP Inc. (46th); Marvell Technology Group Ltd. (207th)
  • Friday: BOE Technology Group Co., Ltd. (18th); ZTE Corp. (t-208th)

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One comment so far.

  • [Avatar for Pro Say]
    Pro Say
    August 20, 2021 06:52 pm

    “CAFC Reverses PTAB Nonobviousness Finding on Soup Dispenser Design Patent Claims”

    No soup (design) for you!

    “CAFC Rules That USPTO Cannot Recoup Expert Witness Fees in Section 145 Cases”

    As. It. Should. Be.

    “Apple Appeals Corellium Copyright Case to Eleventh Circuit”

    Shoe on other foot, don’tcha’ know.

    “USITC ALJ Rules That Google Infringed Sonos Patents, Recommends Import Ban”