Posts in IP News

Other Barks and Bites for Friday, June 15: U.S. Chamber Calls Out Senator Sanders for Abuse of Power, USPTO Creates Process to De-Designate Precedential PTAB Decisions, and Roche Sues Indian Sellers of Expired Accu-Chek Devices

This week in Other Barks and Bites: the D.C. Court of Appeals finds that the Administrative Procedures Act waives sovereign immunity in the context of copyright rule promulgation; the U.S. Chamber of Commerce calls out Sen. Bernie Sanders for abusive subpoenas targeting a pharmaceutical executive at Novo Nordisk; the U.S. Patent and Trademark Office establishes an online process for de-designating precedential decisions of the Patent Trial and Appeal Board; Oracle stock rose by 13% in Wednesday trading following the announcement of a deal with OpenAI; members of North Carolina State University’s 1983 NCAA champion men’s basketball team sue the NCAA over the use of name, image and likeness rights; and Martin Shkreli is sued for improperly releasing copies of a one-of-a-kind Wu-Tang Clan album.

SCOTUS Reverses CAFC’s ‘TRUMP TOO SMALL’ Ruling: Names Clause is Constitutional

The U.S. Supreme Court has reversed the U.S. Court of Appeals for the Federal Circuit’s 2022 decision in Vidal v. Elster, which held the U.S. Patent and Trademark Office’s (USPTO’s) application of Section 2(c) of the Lanham Act to reject the mark TRUMP TOO SMALL was unconstitutional. The High Court today held that the Lanham Act’s names clause does not violate the First Amendment. While all of the justices agreed that the names clause does not violate the First Amendment, they differed on the proper analysis to reach that conclusion.

Federal Circuit Issues Mixed Ruling on Trade Secret Misappropriation of Blood Analyzer

The U.S. Court of Appeals for the Federal Circuit (CAFC), on June 11, 2024, affirmed-in-part and reversed-in-part a U.S. district court ruling surrounding an alleged trade secret misappropriation. In 2014, Alifax, a company that specialized in producing clinical instruments, filed a lawsuit against Alcor Scientific (“Alcor”), which operated in the same general area of clinical development, alleging trade secret misappropriation under the Rhode Island Uniform Trade Secrets Act (RIUTSA).

Ethical Dimensions of Patents: The Impact of the WIPO Treaty on Genetic Resources

The morality of patents remains a pressing issue, particularly concerning genetic resources and traditional knowledge. Ethical concerns persist due to the historical exploitation of these resources without proper recognition or compensation to indigenous communities. Article 1 of the World Intellectual Property Organization (WIPO) Treaty on Patents, Genetic Resources, and Traditional Knowledge outlines its objectives, emphasizing transparency, fairness, and the protection of rights for indigenous communities. Despite progress, differing legislative and judicial approaches across jurisdictions often fail to uniformly protect these communities’ rights.

USPTO Strikes Expanded Paneling Option from New PTAB Operating Procedure

The U.S. Patent and Trademark Office (USPTO) today announced that it has updated its Patent Trial and Appeal Board (PTAB) Standard Operating Procedure (SOP 1) on “Assignment of Judges to Panels.” The 16th revisions to SOP 1 deletes a section on “expanded panels,” among other changes. According to the USPTO’s announcement, the revision “aligns with recently updated Paneling Guidance, Standard Operating Procedure 4, and Director Review procedures.” Just yesterday the Office issued a final rule on pre-issuance circulation and internal review of PTAB decisions.

Amneal, Aided by FTC, Succeeds in Getting Teva Patents Removed from Orange Book

In a significant ruling, the United States District Court for the District of New Jersey has ordered that Teva’s inhaler patents were improperly listed in the Food and Drug Administration’s (FDA) Orange Book, supporting Amneal’s claims that the patents did not cover key drug formulations. The case is centered around Teva’s New Drug Application (NDA) for the ProAir HFA inhaler.

Jones Robb PLLC is Seeking an Attorney/Patent Agent

Jones Robb is seeking registered patent attorneys or patent agents for full- or part-time remote opportunities. Responsibilities include preparing and prosecuting domestic and international patent applications, including strategic patent portfolio development, and other patent-related counseling, including opinions and post-grant projects.

USPTO Finalizes Changes to PTAB Pre-Issuance Circulation Rules

The U.S. Patent and Trademark Office (USPTO) announced a final rule today that will amend the rules of practice before the Patent Trial and Appeal Board (PTAB) to formalize the existing Standard Operating Procedure (SOP4) governing circulation and internal review of PTAB decisions. In October 2023, the Office issued a Notice of Proposed Rulemaking (NPRM) that aimed to “promote consistent, clear, and open decision-making processes while protecting judicial independence and increasing transparency of USPTO processes.”

APPLE JAZZ Owner Pursues Cancellation of APPLE Mark for Entertainment Services in District Court

On June 7, professional trumpet player Charles Bertini filed a lawsuit in the Northern District of California seeking the cancellation of trademark rights owned by consumer tech giant Apple covering the use of the company’s name in connection with entertainment services. Bertini’s lawsuit is the latest effort in his nearly decade-long battle to obtain a federal trademark registration for APPLE JAZZ, a mark which Bertini has used to market live entertainment since 1985.

Kat Von D Meets Tiger King: Has Warhol Destroyed Transformative Fair Use?

Celebrity tattoo artist Kat Von D recreated a photograph of a famous musician in ink on her client’s arm and posted photos of the process online. Netflix docuseries “Tiger King” incorporated video footage of a real-life funeral as part of its documentary coverage of the deceased’s husband. The two parties were sued separately for copyright infringement—of the photograph, in Kat Von D’s case, and the video, in Netflix’s case.

High Court Rejects Bid for Clarity on Trademark Confusion

The U.S. Supreme Court today denied certiorari in Relish Labs v. GrubHub, Inc., a case that asked the Court to review a U.S. Court of Appeals for the Seventh Circuit decision that held Relish Labs LLC and the Kroger Company (who own the “Home Chef” brand and mark) had not proven consumers were likely to confuse their marks with Grubhub and’s logo. Relish Labs petitioned the Court in January of this year.

TikTok’s ‘Grossly Insufficient’ Discovery Responses Lead to Motion to Compel in Cellspin Soft Patent Case

On June 6, patent owner Cellspin Soft filed a motion to compel  in the Eastern District of Texas seeking a court order requiring Chinese social media company TikTok to provide additional responses to interrogatories regarding proper venue in the case. Cellspin Soft’s motion charges TikTok with refusing to provide information within the company’s knowledge about several venue-related aspects of the case, including the identity of corporate whistleblowers and the location of servers used by TikTok’s data security initiative known as Project Texas.

USPTO Extends Deadline for AI Inventorship Comments as Some Criticize Pannu Factors

On June 6, the U.S. Patent and Trademark Office (USPTO) published a notice in the Federal Register announcing that the Office would be reopening the public comment period for the development of inventorship guidance surrounding inventions developed by artificial intelligence (AI) systems. Although the USPTO will continue to collect public comments until the middle of June, public comments received from patent industry stakeholders so far are largely urging the agency to adopt inventorship guidance that provides a broad pathway to patentability for AI-assisted inventions.

Other Barks & Bites for Friday, June 7: Class Action Lawsuit Accusing Google of Copyright Infringement Dismissed; the WHO Releases Report on Health, Innovation and IP; EU Court Bans McDonald’s from using Big Mac Mark for Chicken Sandwiches

This week in Other Barks and Bites: a California district court dismisses a class action copyright lawsuit against Google; an AI lobby group launches a campaign to defend AI against copyright lawsuits; and the National Academy of Inventors announces top 100 universities for granted utility patents.

The Biotechnology Revolution: The Impact of the New WIPO Treaty on Genetic Resources

After 25 years of negotiations, representatives from various countries gathered at a diplomatic conference in Geneva, Switzerland, from May 13 to 24, 2024, resulting in the approval of this historic treaty. The main change brought by the treaty is the mandatory disclosure of the origin of genetic resources and associated traditional knowledge in patent applications.