Posts in Courts

Happy 40th Anniversary, Judge Pauline Newman!

Today, Judge Pauline Newman celebrates 40 years on the U.S. Court of Appeals for the Federal Circuit (CAFC). Newman was appointed to the court on January 30, 1984, by then-President Ronald Reagan and officially assumed office on February 28, 1984. Newman was the first judge to be appointed directly to the Federal Circuit; all of the standing judges at that time attained their position through the merger of the Court of Customs and Patent Appeals and the appellate division of the United States Court of Federal Claims. She filled the Federal Circuit vacancy created at that time by Judge Philip Nichols Jr., who had taken senior status.

CAFC Affirms Albright Rulings in Alexa Shopping List Patent Suit

On February 26, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Freshub, Ltd. v. Amazon.com, Inc., affirming a ruling by U.S. District Judge Alan Albright of the Western District of Texas in the face of appeals from both parties to the case. The Federal Circuit left the lower ruling intact after finding that the record developed at trial did not establish clear error with regards either to Freshub’s patent infringement allegations or Amazon’s inequitable conduct defense.

Patent Filings Roundup: Entropic Patents Challenged at PTAB; Push Data Campaign Grows; MyPort Case Closes

It was an average week all around with 31 new patent filings at the Patent Trial and Appeal Board (PTAB) – all inter partes reviews (IPRs) – and 67 new filings in district court. The bulk of this week’s new PTAB filings (a total of 19) were petitions challenging patents owned and asserted by Entropic Communications LLC [associated with SoftBank Group Corp.] (discussed further below). Other notable filings include petitions challenging patents held by Softex [associated with SoftBank Group Corp.], Dental Imaging Technologies [associated with Envista Holdings Corporation], Resonant Systems [d/b/a RevelHMI], Immersion Corp, and Dsm IP Assets BV [associated with DSM-Firmenich AG].

Rader’s Ruminations: The Most Striking (and Embarrassing) Legal Mistake in Modern Patent Law

The most striking (and embarrassing) mistake of law in modern patent law history occurred in the case of eBay Inc. v. MercExchange, 347 U.S. 388 (2006). This mistake led to an alarmingly incorrect outcome and a monumental disruption of U.S. innovation policy…. The traditional and longstanding remedy for trespass on a patent property right is a permanent injunction. By making removal of an established infringer/trespasser optional in eBay, the Supreme Court vastly undercut and devalued every patent’s exclusive right. This erroneous outcome is a cataclysmic policy error, but that policy miscarriage is not itself the embarrassing error of law.

DIG, Dogs and Bad Wine: Justices Float Scrapping Warner Chappell to Consider Alternate Petition on ‘Discovery Accrual Rule’ for Copyright

Oral arguments took place today in Warner Chappell Music v. Nealy, a case that asks whether a copyright plaintiff can recover damages for acts that allegedly occurred more than three years before the filing of a lawsuit. The Justices repeatedly asked the parties involved whether they should dismiss the case as having been improvidently granted (DIG) in order to first grant and decide another pending case that directly addresses a technically peripheral, but seemingly crucial, question at issue in Warner Chappell, namely, whether the so-called discovery accrual rule applies to the Copyright Act’s statute of limitations for civil claims.  

Supreme Court Denies Five IP Petitions on Issues from IPR Joinder to Contributory Trademark Infringement

On February 20, the U.S. Supreme Court issued an order list that denied petitions for writ of certiorari filed in at least five intellectual property cases. While none of these cases induced large numbers of amici to ask the Court to grant cert, they do represent several current issues in IP law that remain unaddressed. From the use of joinder to evade time-bar limits in patent validity proceedings to the service of process required for a grant of preliminary injunction, the Court’s cert denials leave several open questions with which the patent and trademark community will likely grapple.

‘Where Are the Designers on This?’: Some Post-Argument Thoughts on LKQ v. GM

On February 5, 2024, the U.S. Court of Appeals for the Federal Circuit (CAFC) held its en banc oral argument to reconsider the obviousness test for design patents. Overall, the many judges’ questions indicated a hesitancy to change the current law, as they expressed concern with positions advanced by the patent challenger. Listening to the argument, it became instantly clear that the designer’s voice was missing from the arguments of both parties. The judges had deeply probing and important questions that need the input of a design professional. As an experienced design professional, I penned this article to highlight the designer’s voice by providing answers to several critical questions posed by the court during oral argument.

CAFC Puts Patent Community on Notice of Sanctions for Incorporation by Reference Violations

On February 16, the U.S. Court of Appeals for the Federal Circuit issued a pair of precedential rulings in Promptu Systems Corp. v. Comcast Cable Communications, LLC, vacating a final judgment of infringement after reversing part of the district court’s claim construction rulings. The entire U.S. patent community, however, should take notice of the Federal Circuit’s sua sponte order informing future litigants that evading briefing limits by incorporating much larger documents by reference will likely result in sanctions.

CAFC Schools TTAB on Likelihood of Confusion Analysis

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision on Thursday vacating the Trademark Trial and Appeal Board’s (TTAB’s) denial of a petition to cancel a trademark for a medicated tea product to treat colic in babies. Naterra International, Inc. petitioned the TTAB to cancel the mark BABIES’ MAGIC TEA based on likely confusion in the market with its own registrations for the mark BABY MAGIC, which cover “numerous toiletry goods.” The Board found that Naterra failed to prove confusion under the 13 DuPont Factors.

Patent Filings Roundup: ‘DASH’ Streaming Patents Struck Down Under 101; Samsung IPRs Fall to Fintiv; IP Edge Affiliate Kicks Off New Campaign

It was an average week for patent filings at the Patent Trial and Appeal Board (PTAB) and an above-average week in district courts, with 72 district court complaints filed and 18 new PTAB petitions—one petition for Post Grant Review (PGR), and 17 for Inter Partes Review (IPR). At the PTAB, a number of challenges were filed, including two IPRs by Tesla challenging patents owned by Iqar Inc, four IPRs by Dish challenging patents owned by Entropic Communications LLC (associated with Fortress), two IPRs by Microsoft challenging patents owned by Interdigital Patent Holdings Inc (associated with InterDigital Inc.), and two IPRs by Juniper Networks challenging patents owned by Monarch Networking Solutions LLC (associated with Acacia Research Corporation).

Law School Amici Urge SCOTUS to Grant Kroger Petition on Trademark Confusion and Resolve Circuit Conflict

Three law school faculty and students filed an amicus brief earlier this week urging the U.S. Supreme Court to reverse a trademark decision of the U.S. Court of Appeals for the Seventh Circuit regarding the legal standard for trademark confusion. The brief asks the Court to “end the contradiction and confusion” around the different approaches taken to the likelihood of confusion analysis by federal courts.

CAFC Judges Split on Indefiniteness Analysis for Identity Theft Patent

The U.S. Court of Appeals for the Federal Circuit (CAFC) today held that certain claims of a patent for a system to protect against identity theft and fraud were invalid for indefiniteness. Judge Schall dissented-in-part, explaining that he would not have found the claims indefinite based on the intrinsic evidence. U.S. Patent No. 9,361,658 is owned by Mantissa Corporation and is titled “System and Method for Enhanced Protection and Control Over the Use of Identity.” Mantissa sued First Financial Corporation and First Financial Bank, N.A. in the U.S. District Court for the Northern District of Illinois, alleging infringement of certain claims. The parties mainly disputed two terms during claim construction: (1) “transaction partner” and (2) “OFF.” The district court relied on First Financial’s expert testimony to conclude that “transaction partner” was indefinite, after finding that the expert used was a person of ordinary skill in the art (POSA).

Mechanical Licensing Collective Sues Pandora for Unpaid Royalty Fees Under MMA

On February 12, the Mechanical Licensing Collective (MLC) filed a lawsuit against streaming music company Pandora Media in the Middle District of Tennessee seeking unpaid royalty fees for blanket licenses under the Music Modernization Act (MMA). The case, prompted by recent final determinations on blanket license royalty rates, could prove an interesting test case on the level of interactivity and personal control required before a streaming service qualifies as a covered activity under the MMA.

Chanel’s Win in Trademark Infringement Case is a Lesson for Resellers

Fashion is a brand-driven industry, and few brands in the fashion space carry the same cachet as Chanel. But how much control do brands like Chanel have over merchants who resell name-brand items in the secondary market? The answer, according to a federal jury in the Southern District of New York, is “Quite a bit.” The jury awarded Chanel $4 million in statutory damages on Chanel’s claims of trademark infringement, false association, unfair competition, and false advertising related to What Goes Around Comes Around’s (WGACA) reselling and marketing of Chanel products. The plaintiffs prevailed on all claims.

CAFC Okays USPTO Process for Promulgating Domicile Address Requirement

The U.S. Court of Appeals for the Federal Circuit (CAFC) today said in a precedential decision that the U.S. Patent and Trademark Office (USPTO) did not need to engage in notice-and-comment rulemaking to require trademark applicants and registrants to provide a physical street address with their trademark applications. The court took the case as an opportunity to directly address “when a rule is procedural and excepted from notice-and-comment rulemaking as a ‘rule[] of agency organization, procedure, or practice.’”

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