Posts in IP News

As discussed elsewhere in this Take 5, although California employers generally cannot restrict an employee’s ability to work elsewhere, California employers can protect their trade secrets and confidential information. One pillar of a successful plan to do so is having an employee departure protocol.

Olga Katsnelson has joined Lewis Roca Rothgerber Christie as an associate in the Intellectual Property practice group. Her practice focuses on patent prosecution, patents and prior art searches and evaluations.

After a streak of six patent decisions uniformly overruling the Federal Circuit, and for the first time all term, the Supreme Court finally handed the Federal Circuit a win this week. In its landmark ruling in Matal v. Tam (formerly Lee v. Tam), the U.S. Supreme Court struck down the restriction on the registration of marks that “disparage” under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a). Justice Samuel A. Alito Jr. wrote unanimously for the eight justices in holding that Section 2(a)’s prohibition on disparaging registrations violates “a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

In their recent TC Heartland decision, SCOTUS created unequal protection against patent infringers based on geographical incorporation decisions. They added uncertainty in time, cost, and outcome in patent litigation. Standardized local rules and demand letter reform at the federal level would help mitigate this unfortunate situation… Unless Congress acts to change venue laws, patent owners are now severely restricted in the choice of venue. And, if proposed legislation like S.2733 and the corresponding portion of H.R.9 are any indication, action by Congress may not change much regarding venue. So for now, patent owners must live with the restrictions resulting from TC Heartland.

Burns & Levinson announced this week that George Chaclas has joined the firm as a partner in its Intellectual Property (IP) Group. Chaclas, who has over 19 years of experience developing IP strategy for Fortune 100 and industry-leading companies, world-renowned academic institutions, startups, and entrepreneurs, was previously with Adler Pollock & Sheehan in Providence, RI. Also joining the firm from Adler Pollock are associate Daniel McGrath and patent agent Katherine Larson.

If the Washington, DC rumor mill is correct Commerce Secretary Wilbur Ross will soon announce that Andrei Iancu will be the next Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Sources say an announcement could come as early as the beginning of July. Still, it has been difficult to determine whether those within the rumor mill, which have been in complete agreement on Iancu being the pick, is well informed or simply echoing what everyone else is saying. Regardless, at this point too many indicators are pointing toward Iancu being the pick, with rumors also circulating that he is currently being vetted by the Federal Bureau of Investigation (FBI).

So obviously the patent claims VirnetX has used to pursue infringers such as Apple and Microsoft are not the weak patents that opponents of the patent system claim are the scourge of the system. Well — not so fast! Just because an Article III federal district court confirms the validity of a patent doesn’t mean anything anymore. Indeed, federal courts have become subordinate to the PTAB, which is as ridiculous as it sounds but sadly true. A patent is not valid until an Article I executive tribunal says so, and absolutely no deference is paid to Article III judges of the United States federal courts.

Partial institutions lessen the value of estoppel because the petitioner avoids estoppel on claims that were challenged but not instituted. The PTAB never issues a final written decision for these challenged-but-not-instituted claims. And because estoppel only applies to claims receiving a final written decision, these non-instituted claims escape the estoppel statute See, e.g., Shaw Industries Group v. Automated Creed Systems, 817 F.3d 1293, 1300 (Fed. Cir. 2016). In effect, the PTAB’s current practice saves a petitioner from estoppel on claims it had little chance of invalidating. Thus, under the current practice, a petitioner currently only risks estoppel on claims that it stands a good chance of invalidating. But if the Supreme Court decides as expected, estoppel will attach to all challenged claims of an instituted IPR. Final written decisions will more often include claims found valid, and a petitioner will no longer be able to avoid estoppel for some claims by relying on the PTAB to sort strong challenges from weak ones at the institution stage.

Hoilihan Lokey adds four new Officers in Chicago, Atlanta, and Houston, expanding their service offering to include Trademarks, Brands, and Copyrights. John A. Hudson and Brent Reynolds Sr. have joined the practice as a Director and Vice President, respectively; Scott Womack will join the firm early next month as a Vice President. Mr. Hudson and Mr. Womack will be based in Atlanta, and Mr. Reynolds is based in Houston.

The crux of this so-called adequate description requirement is that once the first four patentability requirements are satisfied the applicant still must describe the invention with enough particularity such that those skilled in the art will be able to make, use and understand the invention that was made by the inventor. For the most part this requirement can be explained as consisting of three major parts. First is the enablement requirement, next is the best mode requirement and finally is the written description requirement.

The trademark application also gives some idea as to how immersive an entertainment experience Nintendo is hoping will be built at its themed areas in Universal parks. Along with arcade games and handheld game apparati, Nintendo is also seeking trademark protection for providing games via smartphone and providing games via a telecommunication network. The trademark application would also protect the mark on the organization and management of video game events, indicating that these themed areas could also host Nintendo video game tournaments just as the world is seeing an increase in eSports revenues.

Dunkin’ Donuts allegations center around a message displayed on windows at the Mike’s Coffee location: “North Now Runs On Mike’s”. Although Steve Copoulos, the owner of Mike’s Coffee, reportedly did not have Dunkin’ Donuts’ “America Runs On Dunkin’” slogan in mind when putting up the window display at Mike’s Coffee, a letter from Dunkin’ argued that the owner’s actions “are clearly designed to trade in on the goodwill and reputation associated with the America Runs on Dunkin’ trademark,” according to The Sun Chronicle.

The Cleveland Clinic’s diagnostic or “testing” patents at issue dealt with a process by which an enzyme was measured and correlated against known levels of the enzyme in patients who were healthy or had cardiovascular disease. The Federal Circuit applied the two step Alice analysis, affirming a finding of Section 101 ineligibility and a failure by plaintiff to state a claim of contributory or induced infringement.

Outdry appealed from a Board determination that its patent directed to waterproofing leather was invalid as obvious in an inter partes review (IPR) proceeding. Outdry challenged the Board’s claim construction and motivation to combine findings. The Federal Circuit affirmed.

NexLearn sued Allen in district court, alleging patent infringement and breach of contract, based on a nondisclosure agreement (NDA) that allowed Allen to use a trial version of NexLearn’s software product… An interactive website that invites a sale into a forum, when no such sale has occurred, is not evidence of minimum contacts to demonstrate the defendant purposefully availed itself of the forum state. A substantial connection with a forum, not an attenuated affiliation, is required for specific personal jurisdiction.