Other Barks & Bites for Friday, August 7: PTAB Precedential Ruling Clarifies OTDP Examination Practices; Eleventh Circuit Says Keyword Bidding Isn’t Trademark Infringement; and Buc-ee’s Expands Trademark Enforcement Campaign

Want to have your doggie(s) featured in one of our future Barks & Bites Columns? Send your dogs photo(s) along with their name, breed (if you know it) and their age to dogwall@ipwatchdog.com. All photos will be added to the IPWatchdog Dog Wall at IPWatchdog Studios and will be added to the queue of images we select from each week.  

Tom Hochstätter (Techson IP) 6 y-old female English Crean Golden Retreiver – SAM.

This week on Other Barks & Bites: the Ninth Circuit reverses the dismissal of malpractice claims stemming from a pattern of missed case deadlines in a trademark infringement proceeding; the Eleventh Circuit becomes the latest regional circuit court to hold that keyword bidding itself cannot constitute trademark infringement; the Patent Trial and Appeal Board issues a precedential ruling clarifying the framework for examining patents based on obviousness-type double patenting concerns; travel center chain Buc-ee’s expands its trademark enforcement campaign days after that campaign was lambasted in HBO’s Last Week Tonight with John Oliver; Ford announces the first electric truck to be built on the company’s Universal Electric Vehicle platform; the Court of Federal Claims dismisses a patent infringement case against the federal government due to the State Secrets Privilege; and patent cross-license agreements are announced in both the memory chip industry between Netlist and Samsung as well as the financial services industry between Bank of America and USAA.

Bites 

PTAB ARP Issues Precedential Ruling Clarifying Framework for OTDP Examination – On Thursday, August 6, the Patent Trial and Appeal Board’s (PTAB) Appeals Review Panel (ARP) consisting of U.S. Patent and Trademark Office Director John Squires, PTAB Chief Judge Kalyan Deshpande and PTAB Acting Deputy Chief Judge Michelle Ankenbrand issued a decision on sua sponte rehearing in Ex parte Baurin, which was marked precedential and reversed the PTAB’s dismissal of an inventor appeal from examiner rejections of patent claims for obviousness-type double patenting (OTDP) because the PTAB failed to consider the anti-harassment rationale for OTDP, which the ARP acknowledged as a basis for supporting OTDP along with concerns over separate ownership. The ruling also laid out a framework for the examination of patents at the USPTO that raise OTDP concerns that acknowledges the purpose of the anti-harassment rationale while suggesting ways to mitigate unfairness, such as requiring actual evidence of previous ownership splitting and harassment resulting from a patent applicant’s conduct.

Ninth Circuit Reverses SJ Dismissal of Trademark Malpractice Suit Over Judge Gilman Dissent – On Thursday, August 6, the U.S. Court of Appeals for the Ninth Circuit issued a published opinion reversing the Central District of California’s grant of summary judgment in favor of defendant Marron Lawyers after finding that plaintiff Koi Design raised a genuine issue of material fact as to whether the defendant breached its duties to disclose information material to litigation and to supervise employees in relation to trademark litigation that led to a default judgment and trebled damages against Koi after counsel assigned by Marron consistently missed case deadlines. Dissenting-in-part from the ruling was Circuit Judge Ronald Lee Gilman, sitting by designation from the Sixth Circuit, who argued that Koi failed to establish but for causation and that Marron’s actions were a concurrent independent cause of Koi’s damages.

Eleventh Circuit is Latest to Rule That Keyword Bidding Isn’t Trademark Infringement – On Tuesday, August 4, the U.S. Court of Appeals for the Eleventh Circuit issued a ruling in Deltona Transformer Corp. v. The NOCO Co. affirming the Middle District of Florida’s denial of judgment as a matter of law (JMOL) to NOCO, finding that NOCO infringed Deltona’s “battery tender” trademark for specialized vehicle-battery chargers and violated state unfair competition laws, but reversed the damages award entered for Deltona under the state law because it only pled consequential damages from loss of consumer goodwill and reputation, not actual damages as required by statute. Although the Eleventh Circuit upheld the trademark infringement ruling and injunction for Deltona, it joined the Ninth Circuit and several other regional circuit courts in holding that keyword bidding cannot cause trademark infringement by itself because the keyword doesn’t display itself in NOCO’s ads, so they are not viewed by consumers and cannot create a likelihood of confusion.

Ninth Circuit Says Parodic Nature of Bad Spaniels Dog Toy is Critical Factor in Dilution Reversal – On Tuesday, August 4, the Ninth Circuit issued a ruling in VIP Products, LLC v. Jack Daniel’s Properties, Inc. reversing the District of Arizona’s entry of permanent injunction against VIP Products after ruling that Jack Daniel’s did not prove that VIP Products’ Bad Spaniels dog toy caused dilution by tarnishment because the record did not show that the famed trade dress and “Jack Daniel’s” mark were portrayed in an unwholesome or unsavory context. In so ruling, the Ninth Circuit pointed out that the district court critically erred in failing to consider whether the parodic nature of the Bad Spaniels dog toy had any impact on the likelihood that consumers would perceive an association with a product clearly intended to be a joke.

CAFC Confirms That eBay’s Reasoning Extends to Preliminary Injunctions – On Tuesday, August 4, the U.S. Court of Appeals for the Federal Circuit issued a precedential ruling in Socket Solutions, LLC v. Import Global, LLC vacating the Southern District of Florida’s entry of preliminary injunction in a patent infringement case over indoor electrical wall outlets. While the Federal Circuit found that the district court erred in assessing the likelihood of success for Socket Solution’s infringement claims due to improper claim construction, the appellate court added that the elimination of the presumption of irreparable harm for patent owners proving infringement stemming from the U.S. Supreme Court’s 2007 ruling in eBay v. MercExchange and the Federal Circuit’s 2011 ruling in Robert Bosch v. Pylon Manufacturing Corp., decisions which involved appeals of permanent injunctions, similarly applies to the preliminary injunction context as well.

Buc-ee’s Expands Trademark Enforcement Campaign Despite John Oliver Backlash – Last week, Texas-based travel center chain Buc-ee’s filed a lawsuit in the Southern District of Ohio against Beaver’s Mini Mart, which has used a beaver mascot as part of the branding for its store in Beavercreek, OH, before Buc-ee’s expanded into Ohio with a Huber Heights, OH, location that opened this April. The lawsuit comes days after Buc-ee’s trademark enforcement campaign, which includes more than a dozen lawsuits filed against small businesses using animal mascots similar to Buc-ee’s own beaver mascot, was featured in a segment on HBO’s Last Week Tonight with John Oliver in which the show’s host John Oliver openly invited a trademark lawsuit from Buc-ee’s by announcing a line of “Buc-Off” merchandise including a beaver mascot and being sold for a limited time on the company’s website.

Barks

USITC Finds Section 337 Violation By Chinese Imports of LCD Glass Substrates – On Thursday, August 6, the U.S. International Trade Commission (USITC) issued a notice announcing that the agency found a violation of Section 337 caused by the importation of patent-infringing glass substrates for liquid crystal displays (LCDs) by several Chinese respondents based on a complaint filed by American glassmaker Corning Inc. 

Samsung, Netlist End Memory Chip Patent Litigation With Five-Year Cross-License – On Wednesday, August 5, Irvine, CA-based advanced memory developer Netlist announced that it had agreed to a patent portfolio cross-license with South Korean electronics conglomerate Samsung lasting five years that will end outstanding patent litigation between the two companies while giving Samsung access to Netlist’s server DIMM and high-bandwidth memory technologies and giving Netlist access to Samsung’s NAND and DRAM products.

Hague District Court Enters Injunction for Novo Nordisk Against Semaglutide Nasal Spray – On Wednesday, August 5, Danish pharmaceutical company Novo Nordisk announced that the District Court of the Hague had entered a permanent injunction against Ceban Ziekenhuisfarmacie B.V. preventing the sale of a compounded semaglutide nasal spray that infringed Novo Nordisk’s supplementary protection certificate to semaglutide.

Bank of America, USAA Cross-License Financial Technology Patent Portfolios – On Tuesday, August 4, American insurance and financial services provider USAA announced that it had entered into a patent cross-license agreement with the Bank of America giving both companies access to a wide range of technologies across artificial intelligence and network infrastructure as well as banking-specific applications like payment processing and mobile check deposit.

CFC Unseals Decision Dismissing NINJA.PRO Case Due to State Secrets Privilege – On Monday, August 3, the U.S. Court of Federal Claims (CFC) issued a ruling dismissing patent and copyright claims filed by Geospatial Technology Associates against the U.S. federal government for its alleged unauthorized use of NINJA.PRO geospatial software after the CFC held that the application of the State Secrets Privilege invoked by the government would make the case unworkable and prevent the government from adequately presenting its defense without the risk of jeopardizing secret information.

MiniMax Declares H3 Video Platform Open Source With Reported Copyright Restrictions – On Monday, August 3, Chinese artificial intelligence developer MiniMax announced that its H3 video generation model was formally being published as an open source model with news reports indicating that the company is imposing downstream copyright restrictions that limit access in the United States, the European Union and several other nations.

This Week on Wall Street

Fathom Electric Pickup Will Be First Vehicle Built on Ford’s UEV Platform – On Thursday, August 6, American carmaker Ford Motor Company announced that it would be releasing a new midsize electric pickup truck under the name “Fathom,” the first vehicle to be built using the company’s Universal Electric Vehicle (UEV) platform, which is designed to produce electric vehicles (EVs) that are profitable within one year, at a starting price just under $30,000 when including destination and delivery charges.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2025 are announcing quarterly earnings next week (2025 rank in parentheses):

• Monday: None
• Tuesday: None
• Wednesday: Cisco Systems, Inc. (35th)
• Thursday: Applied Materials, Inc. (50th)
• Friday: None