Posts in Courts

It was an overall below-average week for patent filings at both the Patent Trial and Appeal Board (PTAB) and district courts. The PTAB had only 15 new PTAB petitions—all inter partes reviews (IPRs), while the district court had only 24 new complaints filed. There were two more Fintiv discretionary denials this week, with the Board denying institution of two IPRs filed by IBM against inventor-controlled DigitalDoor Inc. [funding unknown] patents broadly related to various aspects of data security technologies.

In March 2023, the Patent Trial and Appeal Board (Board) addressed in Penumbra, Inc. v. Rapidpulse, Inc.,  IPR2021-01466, Paper 34 (Mar. 10, 2023), a key issue in inter partes reviews: how to establish a reference patent as prior art based on the filing date of an earlier-filed application, such as a provisional. The Board held that the requirements of the Federal Circuit’s decision in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015), do not apply for post-America Invents Act (AIA) patents. Penumbra, IPR2021-01466, Paper 34 at 29-35. On November 15, 2023, U.S Patent and Trademark Office (USPTO) Director Kathi Vidal designated the Penumbra decision precedential. This article explores the evolution of the law on this issue.

The U.S. Court of Appeals for the Second Circuit today invoked the Supreme Court’s decision in Jack Daniel’s Properties v. VIP Products to affirm a district court’s finding that MSCHF Product Studio, Inc.’s shoe, the Wavy Baby Sneaker, likely infringed Vans, Inc.’s Old Skool shoe. The Second Circuit ultimately affirmed the district court’s grant of a preliminary injunction and temporary restraining order for Vans. The Wavy Baby Sneaker is made by MSCHF, a Brooklyn-based art collective that “has recently focused its artistic expression on ‘sneakerhead culture.,’” according to the Second Circuit opinion. Upon release of the Wavy Baby Sneaker, MSCHF’s co-Chief Creative Officer said in a statement: “’The Wavy Baby concept started with a Vans Old Skool sneaker’ because no other shoe embodies the dichotomies between ‘niche and mass taste, functional and trendy, utilitarian and frivolous’ as perfectly as the Old Skool.”

An event held Monday by the Center for Strategic & International Studies (CSIS), and moderated by former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu, featured a number of high-profile political and professional figures in the intellectual property space debating approaches to strengthening the U.S. patent system, with an emphasis on national security. Representative Deborah Ross (D-NC), who serves on the U.S. House of Representatives’ Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet, first joined Iancu to discuss her reasons for supporting the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act.

On December 4, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential ruling in the ongoing patent battle between computer chip patent owner VLSI and major chipmaker Intel Corp. While the court affirmed the infringement findings underpinning the bulk of VLSI’s $2.175 billion jury verdict awarded back in March 2021, the panel ordered a retrial of damages award for one of two asserted patents and dismissed the doctrine of equivalents infringement finding for the other patent. The Federal Circuit also found that the district court abused its discretion by denying Intel’s motion for leave to add a license defense to its case.