Posts in Courts

Masimo’s legal team told the U.S. Court of Appeals for the Federal Circuit (CAFC) in a January 15 filing that the Exclusion Order Enforcement Branch (EOE) of U.S. Customs and Border Protection has cleared a redesigned version of the Apple watches that were banned by the International Trade Commission (ITC) in late October. The CBP’s decision has not been made public. According to the filing, the redesigned watches do not contain pulse oximetry technology, which was the subject of the ITC exclusion order. The decision, which has not been made public, removes any danger of irreparable harm alleged by Apple, according to the filing.

The intellectual property regime of the International Trade Commission (ITC) made mainstream news this year with its ban on Apple Watch importation and sales in the dispute between Masimo Corporation and Apple. While that dispute is ongoing and the subject of much coverage already, here are five other key IP cases with a variety of important rulings for parties at the ITC—particularly some outside of the typically patent-centric docket.

In Vidal v. Elster, No. 22-704, the United States Supreme Court has heard argument and is expected to decide in the next several months whether Section 2(c) of the Lanham Act can prevent the federal registration of TRUMP TOO SMALL as a trademark for shirts and hats. Section 2(c) prohibits, inter alia, the registration of the name of a particular living individual without his consent. The issue in Elster is whether the First Amendment’s guarantee of free expression transcends Section 2(c)…. To the extent that Section 2(c) survives, in whole or in part, and apart from weighty constitutional concerns which the Court is expected to resolve, there are numerous other problems lurking in this old, dark and dusty subsection—which  are not particularly “small” at all—which only Congress can fix.

Relish Labs LLC and the Kroger Company (who own the “Home Chef” brand and mark) petitioned the U.S. Supreme Court this week, asking the Justices to review a decision by the U.S. Court of Appeals for the Seventh Circuit that held Home Chef had not proven consumers were likely to confuse their marks with Grubhub and Takeaway.com’s logo.

The first week of 2024 was a light one for patent filings. The Patent Trial and Appeal Board (PTAB) had a slightly below average 21 new petitions—all petitions for inter partes review (IPR), while there were only 34 new filings in district court. The PTAB saw new IPRs filed against Advanced Coding (filed by Samsung), XR Communications (filed by Ericsson) and Semiconductor Design (filed by Cadence Design Systems). Four new IPRs challenging three Senko Advanced Components Inc. [associated with Senko Group Holdings Co, Ltd.] patents were filed by US Conec Ltd. After low activity throughout 2023, Askeladden has filed three new IPRs challenging three Calabrese Stemer LLC patents and four new IPRs challenging three Intercurrency Software LLC patents.

In the book / movie “The Shining”, the Overlook hotel is haunted by ghosts involved in past wrongs committed on the property, presumably to make the current inhabitants atone for such sins. Notwithstanding this transcendental precedent, Judge Rodney Gilstrap recently declined to extend such a notion to patents subject to Fair, Reasonable and Non-Discriminatory (FRAND) licensing related obligations.

The U.S. Patent and Trademark Office (USPTO) published guidelines for examiners today on the topic of enablement in light of the Supreme Court’s May 2023 decision in Amgen v. Sanofi. The Office’s view seems to largely mesh with what our guest authors concluded earlier today—Amgen isn’t getting rid of In re Wands and—at the USPTO at least—the decision has seemingly maintained the status quo.

Last term, the U.S. Supreme Court did something strange: the Court unanimously affirmed a circuit decision, which had unanimously affirmed a trial court decision. Little about the law seemed ripe for dispute or change, nevertheless, in Amgen v. Sanofi the Supreme Court spoke. Seven months later, innovators and patent practitioners are still scratching their heads. What impact, if any, does Amgen have? Is there a sign lower courts are interpreting Amgen as signaling a change in American patent law or did it merely ratify what already existed?

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential decision today affirmed two decisions of the Patent Trial and Appeal Board (PTAB) that invalidated some claims and upheld others of a patent owned by Personal Genomics Taiwan, Inc. Based on the PTAB’s claim construction, which the CAFC agreed with, the decision held that Pacific Biosciences had failed to prove the prior art taught the limitation of the preamble phrase of claim 1 in one inter partes review, (IPR) but did prove a different prior art reference taught the limitation in the other proceeding.

The U.S. Supreme Court today denied a petition asking the High Court to clarify patent eligibility jurisprudence under Section 101 since its 2014 ruling in Alice Corp. Pty Ltd. v. CLS Bank Int’l. Realtime Data, LLC asked the Court specifically to address the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) August 2023 decision holding 211 of its patent claims ineligible as abstract.

On January 5, the U.S. Court of Appeals for the Ninth Circuit published an amended opinion and order denying rehearing and rehearing en banc, thus upholding its August reversal of the Northern District of California’s dismissal of a qui tam whistleblower action under the False Claims Act (FCA). The FCA claim was brought by patent attorney Zachary Silbersher against Valeant Pharmaceuticals, predecessor to Canadian drugmaker Bausch Health. The appellate court’s decision turned on the application of the FCA’s public disclosure bar, finding that inter partes review (IPR) proceedings did not trigger the statutory bar to qui tam actions based on evidence previously disclosed during adversarial agency proceedings “in which the Government or its agent is a party.”

The U.S. Supreme Court today denied certiorari in Intel v. Vidal, a case that asked the Court to overturn a U.S. Court of Appeals for the Federal Circuit (CAFC) ruling concerning the Patent Trial and Appeal Board’s (PTAB’s) so-called Fintiv framework. The CAFC’s March 2023 decision said appellate review of whether the PTAB’s discretionary denial rules for inter partes review (IPR) are “arbitrary and capricious” was precluded by Section 314(d) of the patent statute.

On December 27, less than one week before the National Hockey League’s (NHL) Seattle Kraken defeated the Vegas Golden Knights in the 2024 Winter Classic, a lawsuit was filed in the Western District of Washington against the Kraken. The lawsuit alleges that Seattle’s NHL franchise wore an infringing jersey during the Winter Classic, and has sold infringing merchandise, after shutting out the legitimate business interests of a passionate Seattle-area fan who revived that city’s championship legacy more than 90 years after the previous franchise folded.

Looking back over the final few weeks of 2023, patent filings were typical at the Patent Trial and Appeal Board (PTAB) and slightly above average in district courts, with the last weeks of the year seeing 68 district court complaints filed and 25 new PTAB petitions [December 11-17]; followed by 57 district court complaints filed and 29 new PTAB petitions [December 18-24]; and wrapped up with 24 district court complaints filed and 13 new PTAB petitions [December 25-31].

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential ruling that affirmed a district court’s denial of preliminary injunction to DexCom, Inc., holding that the language of the governing contract’s forum selection clause expressly allowed for the filing of inter partes review (IPR) proceedings in certain circumstances. DexCom and Abbott Diabetes Care, Inc. entered into a settlement and license agreement in 2014, following years of patent litigation over their competing glucose monitoring system patents. The governing agreement included a Covenant Period and a forum selection clause that DexCom argued was breached by Abbott’s filing of eight IPR petitions following the expiration of the Covenant Period and 10 months after DexCom filed an infringement suit against Abbott in the Western District of Texas.