Other Barks & Bites for Friday, October 17: CAFC Finds Prosecution Disclaimer in Examiner Acceptance of Patentee’s Scope; Japan Urges Opt-In Copyright Model for Sora 2; and Seventh Circuit Clarifies Evidence Required for Sound Recording Copyright Claims

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This week in Other Barks & Bites: the Federal Circuit issued six precedential IP opinions this week, including in a trade secret misappropriation case, and one on Friday in which the court found that prosecution disclaimer applies due to patentee communications with the U.S. Patent and Trademark Office despite overcoming the examiner’s prior art rejection on independent grounds. The Japanese government also urged OpenAI to change Sora 2’s copyright authorization framework from opt-out to opt-in; the Ninth Circuit reversed a district court finding that Monster Energy did not show a likelihood of consumer confusion between its non-beverage products and “4Monster”-branded camping supplies; Archer Aviation saw a nearly 10% stock increase after purchasing a large portfolio of eVTOL patents; the Seventh Circuit decided an issue of first impression on the evidentiary bases required to make out a copyright infringement claim for a sound recording; the U.S. Chamber of Commerce warned consumers about the risk of fatalities stemming from Chinese counterfeit air bag inflators; and more.

Bites

CAFC Finds Prosecution Disclaimer When Examiner Accepts Patentee’s Scope of Claims – On Friday, October 17, the U.S. Court of Appeals for the Federal Circuit issued a precedential ruling in Barrette Outdoor Living, Inc. v. Fortress Iron, LP affirming judgments of noninfringement and no invalidity from the Northern District of Texas in a patent case involving fencing assemblies with pivoting, sliding connectors. The Federal Circuit ruled that the district court correctly found that Barrette disclaimed non-integral bosses from the scope of its claims before the U.S. Patent and Trademark Office, noting that the patent examiner never disagreed with Barrette’s own characterization over the scope of its patent claims during prosecution but that Barrette rather secured allowance on independent grounds that did not render its prior characterization of claim scope insufficiently clear for prosecution disclaimer. The appellate court also dismissed Fortress Iron’s cross-appeal arguing invalidity for indefiniteness, finding that the patent’s specification provides sufficient guidance as to the scope of Barrette’s “sliding” claim terms.

Japan Urges OpenAI to Adopt Opt-In Framework for Sora 2 Videos Using Copyrighted Material – On Thursday, October 16, news reports indicated that Japan’s Digital Minister Masaaki Taira confirmed that officials within the Japanese government have asked generative artificial intelligence (AI) platform developer OpenAI to develop an opt-in framework for intellectual property owners, especially anime creators, to allow their copyrighted characters and content to be used in short videos created by Sora 2 instead of the opt-out framework that currently requires IP owners to request that Sora 2 not use their content. The news comes about two weeks after OpenAI announced a strategic collaboration with Japan’s Digital Agency to increase the adoption of enhanced AI tools by government employees to improve the delivery of public services.

Seventh Circuit Spells Out Evidentiary Requirements for Sound Recording Copyright Claims – On Thursday, October 16, the U.S. Court of Appeals for the Seventh Circuit issued a ruling in Richardson v. Kharbouch affirming the Northern District of Illinois’ grant of summary judgment while deciding a matter of first impression regarding the types of evidence that suffice to make out a copyright infringement claim as to a sound recording. Ruling that Richardson was required to show that Khartouch duplicated the digital recording of RIchardson’s hip-hop track “Hood* Pushin Weight” in creating the 2013 French Montana rap hit “Ain’t Worried About Nothin,” the Seventh Circuit found that Richardson provided no evidence of how “Ain’t Worried About Nothin” was produced or any evidence of indirect access other than the assertion that “Hood* Pushin Weight” was published on the Internet.

CAFC Reverses District Court for Applying Issue Preclusion from PTAB’s Preponderance Standard – On Wednesday, October 15, the Federal Circuit issued a precedential ruling in Inland Diamond Products Co. v. Cherry Optical Inc., reversing the Eastern District of Wisconsin’s ruling that patent claims asserted by Inland Diamond were obvious after applying issue preclusion preventing the patent owner from relitigating the validity of independent patent claims declared obvious during inter partes review (IPR) proceedings at the Patent Trial and Appeal Board (PTAB) from which the patent claims asserted by Inland Diamond in district court depended. The Federal Circuit noted that its previous rulings in ParkerVision v. Qualcomm (2024) and Kroy IP Holdings v. Groupon (2025), which both stand for the principle that the PTAB’s factual findings under the lower preponderance standard of proof do not have issue-preclusive effect in district court invalidity proceedings that use a clear and convincing evidentiary standard, required concluding that the district court erred in giving preclusive effect to the PTAB’s obviousness determination and claim construction, which was reached under the broadest reasonable interpretation (BRI) standard employed by the PTAB up to November 13, 2018.

Ninth Circuit Reverses Likelihood of Confusion Analysis in “4Monster” Trademark Case – On Wednesday, October 15, the U.S. Court of Appeals for the Ninth Circuit issued a ruling in Monster Energy Co. v. Jiangsu Sitouguai Industry Co., Ltd. reversing the Southern District of California’s grant of summary judgment to Chinese manufacturers of “4Monster”-branded camping equipment from claims of trademark and trade dress infringement filed by American beverage company Monster Energy. The Ninth Circuit found that Monster Energy’s marks were conceptually distinctive, “trigger[ing] the highest degree of trademark protection, that Monster Energy’s own non-beverage goods including towels and backpacks could be found to be related goods by a jury, and also found that the similarity of the marks, survey evidence of actual confusion and the lower degree of consumer care for low-cost goods were factors all weighing in Monster Energy’s favor in the likelihood of confusion analysis.

CAFC Finds No Due Process Violation for PTAB’s Lack of Ownership Determination – On Wednesday, October 15, the Federal Circuit issued a pair of precedential rulings following agency determinations on patent rights owned by Causam Enterprises, including claims that the PTAB violated Causam’s constitutional due process rights by failing to make a determination on patent ownership after ecobee, which listed Causam as the patent owner in its IPR petition, controverted Causam’s ownership in Section 337 proceedings at the U.S. International Trade Commission. In affirming the PTAB’s invalidation of Causam’s patent claims, the Federal Circuit found that while Causam had Article III standing to pursue its claim, the right to assert a due process violation belonged to a party that would be adversarial to Causam’s own ownership allegations, and that in any event Causam’s arguments would have faced further scrutiny under the bar against judicial review of IPR institution decisions codified at 35 U.S.C. § 314(d). This ruling mooted Causam’s appeal from the USITC’s infringement findings, which concluded that Causam did own the patent-at-issue in both cases, which was a continuation-in-part of a parent patent application transferred to a non-party through an assignment which only included continuations of the patent application.

Barks

USPTO Issues NPRM on PTAB Practice Rules, Withdraws Vidal-Era Serial Petition Proposals – On Friday, October 17, the U.S. Patent and Trademark Office issued a notice of proposed rulemaking (NPRM) in the Federal Register designed to focus IPR proceedings at the PTAB on patent claims not previously challenged or where litigation was concluded at an early stage. The USPTO also withdrew an NPRM issued under former Director Kathi Vidal that would have codified rules around serial and parallel petitions and factors for discretionary IPR denials.

Amazon Sues Sanctioned Trademark Attorney, Registrant for Fraudulent Takedowns – On Wednesday, October 15, e-commerce giant Amazon.com filed a lawsuit in the Western District of Washington alleging claims of fraud and breach of contract against California-based trademark attorney Kathy Hao and trademark registrant Shenzhen Seller Growth Network Technology Co., both of whom have been sanctioned by the U.S. Patent and Trademark Office for fraudulent activities, for improperly filing for product takedowns through Amazon’s Brand Registry program.

U.S. Chamber Warns of String of Fatalities Stemming from Counterfeit Air Bag Inflators – On Wednesday, October 15, the U.S. Chamber of Commerce published a blog post calling public attention to safety risks posed by counter air bag inflators produced by Chinese manufacturer DTN Airbag, which have been linked by the National Highway Traffic Safety Administration (NHTSA) to a series of fatal explosions on American roadways as recently as May 2025.

Second Circuit Affirms Joint and Several Liability for Firm in ReplyAll Trademark Case – On Wednesday, October 15, the U.S. Court of Appeals for the Seventh Circuit ruled in Balestriere Fariello v. Gimlet Media, Inc., affirming the Eastern District of New York’s finding that law firm Balestriere Fariello should be held jointly and severally liable for more than $900,000 in attorney’s fees awarded to Gimlet Media due to bad faith and unreasonable positions taken by plaintiff Reply All Corp., represented by Balestriere Fariello, against Gimlet Media over the latter’s production of the “Reply All” podcast.

Eleventh Circuit Dismisses Copyright Appeal Over 2012 Bestseller Proof of Heaven – On Wednesday, October 15, the U.S. Court of Appeals for the Eleventh Circuit issued a ruling in Clark v. Alexander affirming the Northern District of Georgia’s dismissal of author George Lee Clark’s copyright infringement claims, finding that the 28-page outline of Heaven’s Pen submitted by Clark to the U.S. Copyright Office only shared similar scenes á faire to the 2012 bestseller Proof of Heaven authored by neurosurgeon Dr. Eben Alexander, III.

Smucker’s Sues Trader Joe’s Over Infringing Crustless PB&J Sandwiches – On Monday, October 13, food product developer J.M. Smucker Company filed a lawsuit in the Northern District of Ohio alleging claims of trademark and trade dress infringement by American grocery chain Trader Joe’s over that company’s crustless peanut butter & jelly sandwich items featuring similar crimped edges and promoted with images of a crustless sandwich being bitten to show its interior ingredients.

This Week on Wall Street

Archer Aviation Stock Pops 8.5% Following Purchase of eVTOL Patent Portfolio – On Wednesday, October 15, shares of San Jose, CA-based air taxi company Archer Aviation jumped by 8.5% in morning trading after the company announced it had spent $20.91 million to purchase a portfolio of around 300 electric vertical take-off and landing (eVTOL) patents from its German-based rival Lilium.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2024 are announcing quarterly earnings next week (2023 rank in parentheses):

• Monday: None
• Tuesday: 3M Co. (117th); Danaher Corp. (156th); General Electric Co. (37th); General Motors Co. (42nd); Halliburton Co. (63rd); Intuitive Surgical, Inc. (t-146th); Philip Morris International (t-200th); Texas Instruments Inc. (41st)
• Wednesday: AT&T Inc. (107th); Boston Scientific Corp. (t-69th); Edwards Lifesciences Corp. (t-233rd); Hyundai Motor Co. (17th); International Business Machines (7th); LG Electronics Inc. (2nd); SAP SE (t-82nd); Thermo Fisher Scientific Inc. (t-161st)
• Thursday: Baker Hughes Co. (148th); Dow Inc. (124th); Ford Motor Co. (33rd); Honeywell International Inc. (50th); Intel Corp. (13th); Nokia Corp. (47th); STMicroelectronics N.V. (64th); Textron Inc. (t-200th); AB Volvo (t-114th)
• Friday: Procter & Gamble Co. (t-82nd); Shin-Etsu Chemical Co., Ltd. (199th); Signify N.V. (t-163rd)