Posts in IPWatchdog Articles

Two key amicus briefs were filed on Thursday, December 12, backing Judge Pauline Newman’s appeal to the U.S. Court of Appeals for the District of Columbia Circuit from the dismissal of her case against the Chief Judge of the U.S. Court of Appeals for the Federal Circuit (CAFC). First, several law professors and a former International Trade Commission (ITC) commissioner joined the Manhattan Institute in submitting an amicus brief urging reversal of the district court’s judgment and a declaration that the CAFC’s proceeding against Judge Newman is unconstitutional for its failure to transfer the complaint to a different circuit initially. And six retired federal judges filed a separate brief urging the court to intervene because the Federal Circuit’s actions “directly challenge the independence of all federal judges.”

This week in Other Barks & Bites: the U.S. Patent and Trademark Office signed its first new collective bargaining agreement with the union representing its patent employees in nearly 40 years; the Second Circuit denied a petition for rehearing of an earlier panel decision affirming the dismissal of copyright infringement claims against Ed Sheeran’s “Thinking Out Loud”; Public Citizen published a report claiming that patent evergreening will cost Medicare up to $5.4 billion in lost savings from generic competition; shares of Adobe stock dropped 13% following poor guidance in first quarter generative AI sales; the Supreme Court heard oral arguments on the application of Section 1117(a)’s just sum provision to disgorged profits award calculated from non-party affiliate revenues; and the European Patent Office began the implementation of sanctions against patent applications filed by Russian applicants.

The doctrine of exhaustion, also known as the first-sale doctrine, is a cornerstone of intellectual property (IP) law. By limiting the control that IP holders can exert over their goods after the first authorized sale, this principle ensures that exclusive rights do not unnecessarily hinder competition or consumer access. Despite the existence of numerous international agreements on intellectual property, such as the TRIPS Agreement, IP rights protection and enforcement still largely operate at the national level. Countries retain the flexibility to implement their own IP laws and regulations based on their domestic priorities, economic policies, and legal traditions.

A 2024 Republican election victory marks the end of the four-year Neo-Brandeisian antitrust experiment at the Federal Trade Commission (FTC) and Department Of Justice (DOJ). Spearheaded by FTC chair Lina Khan and DOJ attorney general for antitrust Jonathan Kanter, their movement sought to upend antitrust’s longstanding bipartisan consumer welfare-focused consensus. Instead, they focused on punishing businesses for bigness; opposing mergers and other business practices based on speculative rather than probable theories that of competitive harm; and orienting antitrust toward policy considerations outside economic competition, such as income redistribution, labor, and environmentalism.

As artificial intelligence (AI) systems become central to business innovation, trade secret law is crucial for protecting the proprietary algorithms and datasets that drive them. However, AI presents unique challenges, requiring strategies to keep these competitive advantages secure in an increasingly digital landscape.

At a friend’s dinner party a few months ago, I sampled a craft whiskey from his collection. I loved it, so I took a photo of the bottle and decided I would buy one for myself. Yet when I eventually scanned the shelves at the store, the distinctive label was nowhere to be found. After searching multiple stores with no luck, I eventually resorted to Googling the name. That’s when I discovered: the brand I was looking for no longer existed.

Today, the U.S. Supreme Court heard oral arguments in Dewberry Group, Inc. v. Dewberry Engineers Inc., which asks the Court to determine whether an award of defendant’s profits for trademark infringement under the Lanham Act can include profits from legally separate non-party corporate affiliates. Much of the day’s questioning revolved around whether the $43 million profits award affirmed by the Fourth Circuit was authorized under the just sum provision of 15 U.S.C. § 1117(a) given the circuit court’s scant consideration of equitable considerations and the unique facts of the case, in which the defendant property management firm claimed 30 years of losses and the entire profits award was calculated from revenues held by affiliated real estate holding entities having the same sole owner as the defendant.

Transparency of source or “provenance” of digital content like images is becoming essential for credibility and, to some extent, the future of artificial intelligence (AI). On the current episode of Understanding IP Matters (UIPM), Santiago Lyon discusses the importance of provenance in copyrighted content as it exists in an AI-driven world. As the role of AI has grown in the handling, manipulation and distribution of digital media, Lyon talks about how consumers will know when digital media they view is generated wholly by human creators, wholly by AI, or if there is a blend of creation.

Last week President-elect Trump announced that he would nominate Gail Slater as Assistant Attorney General for the Antitrust Division of the Department of Justice. Meanwhile, people with knowledge of the Trump Transition tell IPWatchdog that the front runner to be named Director of the United States Patent and Trademark Office (USPTO) continues to be Vishal Amin, Intel’s head of IP policy. While it is true that Amin served as the Intellectual Property Enforcement Coordinator during President Trump’s first term, the appointment of Amin to head the USPTO would be an extraordinary head-scratcher, if that in fact does come to pass.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday, December 10, in its sixth precedential patent opinion of the last week, reversed and remanded a district court finding that Crown Packaging Technology Inc.’s patents were not invalid under the on-sale bar. The case concerns Crown’s U.S. Patent Nos. 9,308,570; 9,968,982; and 10,751,784, which relate to “necking machines” meant to reduce the diameter of the tops of metal beverage cans. The earliest priority date of the three patents is April 24, 2008. The case turned on whether Crown made a commercial offer for sale in the United States before the April 24, 2007, critical date of the asserted patents.

This week my conversation is with Leo White, who is Chief IP Counsel and Associate General Counsel for The Duracell Company. During our conversation we begin by briefly talking about patent strategy, but then move quickly to brand protection, trademarks, trade dress and effectively working with customs agencies around the world. While Duracell does patent its various battery technologies, and while White is responsible for maintaining a worldwide patent portfolio for the company, the company’s trademark and trade dress portfolio are the IP tools of choice used most often when working to fight the never-ending battle against counterfeiters and copycats, and to also protect against gray market imports.

Yesterday, the U.S. Supreme Court (SCOTUS) denied the petition for writ of certiorari filed in Zimmer Biomet Holdings, Inc. v. Insall, which challenged an arbitration award ordering Zimmer Biomet to continue paying royalties on knee replacement technologies following the expiration of associated patent rights. The Supreme Court’s denial leaves in place lower rulings finding that the arbitration award was not against public policy because modifications to the licensing agreement separated the royalty provisions from Insall’s patent rights to those knee replacement technologies.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday, December 9, in a precedential decision affirmed a district court determination that Priceline.com and Booking.com did not infringe DDR Holdings’ U.S. Patent No. 7,818,399. The opinion was authored by Judge Chen. The ‘399 patent relates to “generating a composite web page that combines certain visual elements of a ‘host’ website with content from a third-party ‘merchant,’” according to the CAFC opinion. The patent was also at issue in the CAFC’s 2014 decision between DDR and Hotels.com, with the court ultimately upholding the ‘399 patent as eligible under Section 101.

An invention cannot be patented if the differences between a claimed invention and the prior art are such that the claimed invention as a whole would have been obvious to a person having ordinary skill in the art at the time the invention was made. Determining obviousness – and the validity of your patent – is more than simply establishing that the invention doesn’t already exist and that it isn’t documented elsewhere. Its conception must also not have otherwise been obvious to those in the field at the time.

On December 5, the U.S. Government Accountability Office (GAO) published a report reflecting the agency’s investigation into third-party funding of patent litigation in the United States. While the GAO was unable to quantify the extent to which third parties are financing and taking an interest in infringement suits due to limited data on the subject, interviews with a range of industry stakeholders reflected mixed views on the impacts of disclosure requirements that could identify conflicts of interest and foreign involvement, with such rules also raising concerns about biasing litigation with issues having little relevance to infringement allegations.