Posts in Litigation

EPO Touts Successful First Year for Unitary Patent Program Despite UPC Technical Issues

On June 1, one year after the date when patents with unitary effect became effective in the European Union (EU), the European Patent Office (EPO) announced that it had registered more than 27,500 unitary patents, representing about 25% of all European patents granted over the past year. The EPO also reported that the Unified Patent Court (UPC) has received a total of 373 case filings since that court first became operational one year ago, although news reports indicate that technical issues have caused problems for some parties appearing before the EU’s newest patent court.

INTA Backs NIGHTWATCH Decision on ‘Conversion’ of EUTMs

The International Trademark Association (INTA) filed an amicus brief on June 1 with the European Union Intellectual Property Office (EUIPO) Grand Board of Appeal supporting the Fourth Board of Appeal’s 2022 approach to conversion of EU Trade Marks (EUTMs). The underlying case relates to the EUIPO’s decision in February 2022 to for the first time refer questions of legal interpretation of the EU Trade Mark Regulation (EUTMR) to the enlarged Board of Appeal.The EUIPO’s Executive Director, João Negrão, asked the Grand Board of Appeal to weigh in on five questions concerning the practice of “conversion,” which allows an EU Trade Mark (EUTM) application or registration to be converted into one or more national applications when necessary.

Should Kellogg’s be Frosted by Seinfeld’s ‘Unfrosted’?

“Unfrosted,” Jerry Seinfeld’s unauthorized (and totally made up) history of Pop Tarts, dropped on Netflix on May 3, 2024, to mixed reviews and 7.1 million viewers in its first week. Many of those who watched probably assumed Seinfeld had Kellogg’s permission to use the Pop Tarts trademark – such is the success that brand owners have had in convincing the public of the brand owners’ exclusive control over their marks. However, brand owners do not have control over all uses of their marks.

Prost Dissents from CAFC’s Denial of New Trial on Damages for Google

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday, June 3, issued a precedential decision affirming a district court’s orders in favor of EcoFactor, Inc. against Google, whose appeal in part asked for a new trial on damages due to prejudicial error. Judge Prost dissented-in-part. EcoFactor sued Google for infringement of its U.S. Patent No. 8,738,327 relating to smart thermostat technology. EcoFactor said Google’s Nest thermostat products in particular were infringing. Google moved for summary judgment that certain claims of the patent were invalid as abstract under Section 101 but the district court denied the motion, and also denied Google’s Daubert motion to exclude the opinion of EcoFactor’s damages expert, Mr. Kennedy, whose testimony Google argued was “unreliable and therefore prejudicial,” according to the CAFC.

Noncompetitor Critics Aren’t Trademark Infringers: It’s Time for the Law to Make that Explicit

Can you spot criticism? An environmental group calls out an oil company over emissions. A union calls out a corporation over labor practices. A human rights group calls out the prison system. Criticism—straightforward enough. Some corporations, however, worry that some people won’t understand. They worry that consumers might think that the targeted corporations actually support the criticism. For example, consumers might think that Corporation X supports a labor union website that shows Corporation X’s logo and the phrase, “Corporation X must improve wages and working conditions!”

The Devil Made Me Do It: When are USPTO Filings ‘Involuntary’?

In Dragon Intellectual Property LLC v. Dish Network LLC, – (Fed. Cir., May 20, 2024), a divided panel of the U. S. Court of Appeals for the Federal Circuit held that a prevailing defendant in an otherwise “exceptional” patent infringement case could not recover attorney fees expended in a parallel inter partes review (IPR) proceeding because the defendant’s initiation of the IPR was “voluntary.” The court ostensibly drew a bright line between Dish’s “voluntary” U.S. Patent and Trademark Office (USPTO) filing and the purportedly “involuntary” filing at issue in a 1988 Federal Circuit case. I respectfully suggest that the earlier case was wrongly decided and that there is no meaningful difference between the fact patterns in the two cases.

NYIPLA Questions Need for Double Patenting Doctrine Under Current U.S. Patent Law

On May 28, the New York Intellectual Property Law Association (NYIPLA) filed an amicus brief with the U.S. Supreme Court in Cellect v. Vidal, urging Court to take up Cellect’s appeal from the invalidation of its patent claims to image sensors for obviousness-type double patenting (ODP). The NYIPLA’s brief contends that the Federal Circuit’s decision increases the risk of invalidity for a significant portion of U.S. patents despite the fact that the traditional basis for ODP doctrine no longer exists under U.S. patent law.

How the UPC Courts Have Ruled on Security/ Bonds for Initiating Actions

An interesting decision of the Unified Patent Court’s (UPC’s) Munich Local Division, issued on April 23, 2024 (UPC CFI No. 514/2023), confirmed that “the prerequisite for a successful application (for security/bond) would be a demonstration that the financial circumstances of the other party give rise to fears that any claim for reimbursement of costs cannot be satisfied or that, despite sufficient financial resources, enforcement of a decision on costs appears to be impossible or fraught with particular difficulties.”

Winning Strategies at the Federal Circuit

Knowing your way around the U.S. Court of Appeals for the Federal Circuit (CAFC)—the specialized appellate court that has exclusive jurisdiction over patent cases—is essential to success in patent appeals. Founded in 1982, the Federal Circuit is the thirteenth federal court of appeals, and has nationwide jurisdiction over many types of cases, including international trade, government contracts, patents, trademarks, certain monetary claims against the United States government, federal personnel, and veterans’ benefits, among others.

Latest Bid to Review Rule 36 Practice Shot Down by SCOTUS

Following the denial of another petition for certiorari in March, Jodi A. Schwendimann today lost her bid for review at the U.S. Supreme Court on the question of whether it is permissible for the U.S. Court of Appeals for the Federal Circuit (CAFC) to issue a Rule 36 affirmance of claims as being anticipated when, according to the petition, two different venues issued inconsistent claim constructions and it isn’t clear which the CAFC has deemed correct.

Recent Boards of Appeal Decisions on Added Matter: Holding up the Standard

The European Patent Office’s (EPO) Boards of Appeal have displayed a stringent approach towards added subject matter in recent decisions, particularly in comparison to other jurisdictions. This stringency is rooted in the provisions of Article 123(2) of the European Patent Convention (EPC), which prohibits amendments that extend beyond the content of the original patent application. The primary objective is to maintain the correlation between the granted patent’s scope of protection and the technical disclosure initially provided in the application.

Federal Circuit Says Minority Ownership Interest Isn’t Enough for Standing to Seek Trademark Cancellation

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday, May 23, affirmed a Trademark Trial and Appeal Board (TTAB) decision that found a party with only a minority ownership interest in the owner of allegedly infringed marks did not have standing to seek cancellation of the marks. The decision was precedential and authored by Judge Lourie.

Impact of Full Federal Circuit’s Design Patent Decision is Far from Obvious

Applications for design patents have surged in recent years, with the U.S. Patent and Trademark Office (USPTO) reporting a 20% increase in applications over the last five years. Design patents have become an important tool in brands’ intellectual property portfolios – and for good reason: where trade dress protection can take years (and significant resources) to acquire, with the right planning and timing, design patents are easy to obtain and offer strong protections for brands.

En Banc CAFC Overrules Design Patent Obviousness Test in Light of KSR

The full U.S. Court of Appeals for the Federal Circuit (CAFC)—minus Judges Newman and Cunningham—today overruled the so-called Rosen-Durling test for determining design patent obviousness, explaining that it has adopted “an approach consistent with Congress’s statutory scheme for design patents, which provides that the same conditions for patentability that apply to utility patents apply to design patents.” The decision also said the Supreme Court’s precedent in KSR v. Teleflex favors a more flexible approach than Rosen-Durling.

CAFC Says IPRs are Voluntary, Fees Not Recoverable Under ‘Exceptionality’ Rule

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday, May 20, said in a precedential decision that fees incurred during inter partes review (IPR) proceedings are not recoverable under the “exceptionality” rule of 35 U.S.C. § 285. The court also rejected Dragon Intellectual Property, LLC’s argument that the case should not qualify as exceptional and rejected DISH Network, LLC’s argument that Dragon’s counsel should be held jointly and severally liable for the award of attorneys’ fees.

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