On February 27, the U.S. Supreme Court granted a motion for leave filed by the U.S. Solicitor General to participate in oral argument, as well as for divided argument and for enlargement of oral argument time, in Abitron Austria GmbH v. Hetronic International, Inc. While the Court’s decision to grant the motion shows its interest in the Solicitor General’s arguments in favor of limiting the extraterritorial reach of the Lanham Act, a reply brief filed the same day by petitioner Abitron argues that the federal government’s proposed legal tests still go too far in allowing Lanham Act claims to reach foreign infringing sales. Last September, the U.S. Solicitor General filed a brief representing the views of the federal government on the issues in Abitron Austria, a case which asks whether the U.S. Court of Appeals for the Tenth Circuit erred in awarding civil remedies under the Lanham Act for infringement of U.S. trademarks through purely foreign sales that neither reached the United States nor confused U.S. consumers. In its brief, the Solicitor General urged the Supreme Court to grant Abitron’s petition for writ of certiorari and rein in the Tenth Circuit’s approach toward awarding Lanham Act damages for foreign infringing sales.
I attended the hearing at the U.S. Court of Appeals for the Federal Circuit (CAFC) in Maalouf v. Microsoft on Monday February 6, 2023, and the CAFC issued its opinion in the case this past Thursday. This case has curious origins. Through his company Dareltech, Ramzi Khalil Maalouf, a Lebanese immigrant and U.S. citizen, sued Xiaomi, a Chinese multinational corporation, for patent infringement in New York. The case was dismissed without prejudice because Xiaomi was found not to have a physical presence in New York, notwithstanding their proven secret office. Later, Microsoft, naming Xiaomi as the real party in interest, filed an Inter Partes Review (IPR) with the Patent Trial and Appeal Board (PTAB). In other words, a U.S. Big Tech multinational acted on behalf of a China-controlled multinational to invalidate the patents of a small American inventor, thus clearing the way into the U.S. market for the China-controlled multinational.
Companies rely on copyright protections to shield their software, data sets, and other works that are licensed to their customers; however, a reframing of what constitutes a “transformative use,” and the extent a license can restrict such fair uses, may whittle away all avenues of protections. On October 22, 2022, the Supreme Court of the United States heard arguments for Andy Warhol Foundation v. Goldsmith. The question before the Court is where does a copyright holder’s right to create derivative works stop and “fair use” of the work begin? Companies that license data sets or data feeds should pay close attention, as the Court’s decision could narrow contractual remedies.
A number of amici weighed in this week on Novartis Pharmaceuticals’ petition to the U.S. Supreme Court asking the Justices to consider whether the U.S. Court of Appeals for the Federal Circuit (CAFC) should have been allowed to vacate the decision of a previous three-judge panel composed of different judges, thus invalidating Novartis’ patent for a dosing regimen for its multiple sclerosis drug, Gilenya. In January of this year, Novartis followed through on its September 2022 promise that it would appeal the CAFC’s June 2022 decision invalidating its U.S. Patent No. 9,187,405 to the Supreme Court, after the CAFC denied its request to rehear the case.
Last week, U.S. District Judge Yvonne Gonzalez Rogers issued an order denying Cellspin Soft’s motion for recusal that sought the vacatur of a summary judgment that released Fitbit, Nike, Under Armour, and others from patent infringement liability. Judge Gonzalez Rogers wrote “in short, plaintiff’s attack on the integrity of the judiciary… not only demonstrates a measure of desperation, but is divorced from the law and the facts.”
The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday, February 17, ruled in a precedential opinion that a Nebraska district court abused its discretion in granting a preliminary injunction barring the owner of patents on holiday string lights from communicating to its customers that a competitor was infringing its patents. Lite-Netics, LLC sued Holiday Bright Lights (HBL) in the U.S. District Court for the District of Nebraska for infringement of its U.S. Patent Nos. 7,549,779 and 8,128,264, both titled “Magnetic Light Fixture.” HBL was at one time a customer of Lite-Netics and also sells holiday string lights, including one it calls a “Magnetic Cord,” which is one of the two products Lite-Netics alleged infringed its patents. HBL’s U.S. Patent No. 11,333,309 describes the product and issued in 2022 based on a 2021 application. Lite-Netics’ patents issued in 2009 and 2012.
On February 17, 2023, Germany ratified the Agreement on the Unified Patent Court. This means that the Unified Patent Court (UPC) will definitely go live on June 1, 2023. Thus, it’s time to get one’s ducks in a row and to prepare for this new court system, which provides for a new pan European injunction in patent matters. In order to faciliate such preparation, we will be providing a series of five articles over the coming months until the system starts that will deal with the most important aspects of the UPC.
The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday issued a precedential opinion clarifying the requirements for the disclosure of technology that is ready for patenting at a public event to qualify as being “in public use” for purposes of the pre-America Invents Act (AIA) public use bar under 35 USC 102(b). The appeal stems from Minerva Surgical, Inc.’s suit against Hologic, Inc. and Cytyc Surgical Products, LLC for infringement of U.S. Patent No. 9,186,208, titled “Systems for endometrial ablation.” The U.S. District Court for the District of Delaware granted summary judgment for Hologic that the relevant claims were anticipated under the public use bar of the pre-AIA Section 102(b).
The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion on Monday that reversed and vacated in part a previous lower court ruling in a patent case related to fuel tank sensors. In 2020, SSI Technologies filed a lawsuit against Dongguan Zhengyang Electronic Mechanical LTD (DZEM), alleging infringement of two patents that covered fuel tank sensor technology. SSI accused DZEM of producing systems to reduce emissions for diesel truck engines that infringed U.S. Patent Nos. 8,733,153 and 9,535,038. In September 2021, a Wisconsin district court dismissed the patent infringement claims by SSI, as well as DZEM’s counterclaims that the patents were invalid.
The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming a Delaware court’s grant of summary judgment for Elysium Health that the asserted claims of ChromaDex, Inc.’s patent on an isolated form of vitamin B3 are directed to unpatentable subject matter under Section 101. Judge Prost authored the opinion. ChromaDex sells dietary supplements embodying the patent, which it licenses from Dartmouth College, and sued Elysium for patent infringement in 2018. Elysium moved for summary judgment that the claims were invalid under Section 101 and the district court agreed, finding that the claims were directed to a natural phenomenon, specifically, “compositions comprising isolated [NR], a naturally occurring vitamin present in cow milk.”
Late last week, a slew of additional amicus briefs were filed with the U.S. Supreme Court in Amgen v. Sanofi, a closely-watched case that will consider the scope of the enablement inquiry under 35 U.S.C. § 112. More than 30 amici in total have now weighed in on the case. The Court granted certiorari in November 2022 over the U.S. Solicitor General’s recommendation to deny the petition. The justices granted cert on one of the two questions presented.
Luxury fashion brand Hermès won their trademark lawsuit against Mason Rothschild, the creator of the non-fungible tokens (NFT) MetaBirkins, on Wednesday. The trial was the first legal case that tested the bounds of artistic expression in NFTs against the country’s intellectual property laws. A nine-member New York jury ordered Rothschild to pay Hermès $110,000 for infringing on the luxury brand’s trademark, and $23,000 for cybersquatting. The jury ruled that Rothschild had to pay the cybersquatting damages because he used a domain name confusingly similar to that of Hermès.
The U.S. Court of Appeals for the Federal Circuit (CAFC) today upheld in a precedential decision the U.S. Patent and Trademark Office’s (USPTO’s) denial of Director rehearing for two inter partes review (IPR) decisions in which the Patent Trial and Appeal Board (PTAB) found CyWee Group Ltd.’s U.S. Patent Nos. 8,441,438 and 8,552,978 unpatentable. The IPRs were brought by Google in 2018 challenging certain claims of the two patents, which cover 3D pointing devices. The PTAB instituted the two IPRs within three months of CyWee’s preliminary responses to the petitions, and following institution, the IPRs were joined by other parties, including Samsung, LG and Huawei. Because of the joinders, the PTAB extended the deadline for its response by one month beyond the statutory deadline of one year from institution, to January 10, 2020. The Board issued final written decisions (FWDs) in both IPRs on January 9, 2020, finding all claims unpatentable for obviousness.
Patent Term Adjustment (PTA) was designed to serve an important purpose – to compensate patentees for time lost during examination due to U.S. Patent and Trademark Office (USPTO) delays. Most industries rely heavily on their patent portfolios to drive business strategies that ultimately impact their bottom line. The impact of patent term is especially acute in the pharmaceutical and biotechnology industries, where companies spend billions of dollars to develop new drugs. For these companies, every day that their patent is in force matters, generating millions in additional revenue. With so much at stake, companies strive to accrue all the patent term they are entitled to under the current statutory regime, including by way of PTA.
The American Bar Association (ABA) filed an amicus brief on February 3 with the U.S. Supreme Court asking the Court to clarify issues related to the application of the Lanham Act to trademark disputes that cross international borders. The ABA filed the brief in the Abitron Austria GmbH v. Hetronic International, Inc. trademark case, in which the U.S. Court of Appeals for the Tenth Circuit affirmed a $90 million damages award for trademark infringement based on infringement that occurred almost entirely outside of the United States.