Posts in IP News

What’s Next After Brazil’s Enactment of the Nagoya Protocol

In a significant milestone for the preservation of biodiversity, Decree 11,865/2023, published in the Official Gazette on 12/28/2023, enacted the Nagoya Protocol in Brazil. The protocol, providing for access to genetic resources and the fair sharing of benefits arising from their use, is part of the renowned Convention on Biological Diversity (CBD). The Nagoya Protocol, in force since October 12, 2014, relates to the international commitment of 140 countries, including Brazil, to implement the objective of the CBD on the fair and equitable sharing of benefits from the use of genetic resources and the traditional knowledge associated with them (TK).

Federal Circuit Upholds Mixed ITC Determination Authorizing Google Redesigns

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday affirmed an International Trade Commission (ITC) final determination that said Google infringed five of Sonos, Inc.’s patents but which also found three proposed redesigns did not infringe. Sonos owns U.S. Patent Nos. 10,439,896 (“’896 patent”), 9,195,258 (“’258 patent”), 9,219,959 (“’959 patent”), 10,209,953 (“’953 patent”), and 8,588,949 (“’949 patent”). Sonos filed a complaint with the ITC alleging certain Google audio players and controllers infringed the patents and the ITC agreed, issuing a limited exclusion order and a cease-and-desist order (CDO) preventing Google from marketing the infringing products in the United States.

Vidal Vacates Board’s Denial of IPR Institution on Auto Part Patent

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal vacated and remanded a decision of the Patent Trial and Appeal Board (PTAB) on Friday that had denied institution of an inter partes review (IPR) requested by auto parts manufacturer, Mahle Behr Charleston, Inc. U.S. Patent No. RE47,494 E is owned by inventor Frank Amidio Catalano and covers “a device to prevent corrosion [in motor vehicle radiators] caused by electrolysis.” Mahle Behr requested IPR of the patent, arguing that a prior art reference called Godefroy anticipates and renders obvious certain claims.

Lowenstein & Weatherwax LLP is Seeking a Mid-level Associate, Senior Associate, Counsel or Junior Partner

Lowenstein & Weatherwax LLP, one of the premier IPR firms in the country, seeks a seasoned patent litigator to join its firm. Candidates should have at least three years of experience litigating patent validity whether in district court or before the PTAB. A technical background is preferred but not required. This is a full-time, permanent position located in Santa Monica, CA, or remote.

Other Barks and Bites for Friday, April 5: Newman Brief Urges Court to Deny Judicial Council’s Motion to Kill Suspension Challenge; Over 200 Artists Ask AI Companies to Stop Devaluing Music; Spicy Condiment Trademark Battle Heats Up

This week in Other Barks and Bites: Judge Pauline Newman responds in district court challenge to her suspension; Over 200 musical artists sign letter imploring tech companies to stop using AI to devalue artists’ work; a California district court denies a motion from tech giants, including Google and Apple, that sought to challenge USPTO IPR rule; and George Carlin’s estate successfully settles copyright infringement lawsuit with podcast that impersonated the comedian’s voice using AI.

The Air Force Civilian Service is Seeking a Patent Attorney

The Air Force Civilian Service (AFCS) is looking for a Patent Attorney (NH-1222-04) to join the team at the Air Force Materiel Command Law Office at Wright-Patterson AFB, Dayton, OH. The primary purpose of this position is to provide Intellectual Property legal services including preparing and prosecuting patent applications; advising Air Force employees on rights in inventions, patents, and other intellectual property; and legal reviews of instruments for the transfer of Air Force technology.

CAFC Precedential Decision on Rule 12(b)(6) Affirms Patent Ineligibility of Medical Scan Visualization Claims

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision decision authored by Judge Reyna today affirming a district court’s grant of a Rule 12(b)(6) motion alleging that AI Visualize’s patent claims were ineligible under Section 101. AI Visualize owns U.S. Patent Nos. 8,701,167 (’167 patent), 9,106,609 (’609 patent), 9,438,667 (’667 patent), and 10,930,397 (’397 patent), which all relate to visualization of medical scans. AI Visualize sued Nuance Communications, Inc. and Mach7 Technologies, Inc. for patent infringement. Nuance filed a motion to dismiss for failure to state a claim, arguing the claims were directed to patent ineligible subject matter. Since AI Visualize’s Amended Complaint provided no further information about the eligibility of the claims and neither party asked for claim construction, the district court reviewed the eligibility of the claims and concluded they were all ineligible.

Report: Recent IP Summit Explores the Relationship Between AI Benefits, IP Rights

The remarkable story that inventor Alan Nelson shared last week at the 7th Annual Intellectual Property Awareness Summit held by CIPU at Northwestern University was revealing in many ways. Dr. Nelson related how he overcame numerous obstacles to commercialize a landmark technology for detecting cervical cancer in the 1990s. Using artificial intelligence (AI) while at the University of Washington, Dr. Nelson automated and vastly improved how early and accurately cervical cancer is identified — he and his team invented a machine to read Pap smears. 

CAFC Affirms District Court Dismissal of Pro Se Inventor’s Procedural and Patent Claims

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday affirmed a number of district court orders against inventor Urvashi Bhagat, whose patent application  was rejected by the U.S. Patent and Trademark Office (USPTO). Bhagat’s U.S. patent application No. 13/877,847 covers orally-delivered nutritional formulations containing omega-6 fatty acids and antioxidants. The application was filed in 2013 and the USPTO examiner rejected all claims as obvious, two claims as lacking written description, several other claims as indefinite and others for improper dependency. On appeal to the PTAB, the Board summarily affirmed the dependency and indefiniteness rejections, affirmed the obviousness rejection on the merits and reversed the written description rejection. Bhagat then appealed to the U.S. District Court for the Eastern District of Virginia, claiming the USPTO erroneously rejected her patent claims and asking for damages due to the Office’s bad faith and for taking her property.

Patent Filings Roundup: Financed IP Edge Patents Back From the Dead; Toyota Challenges InfoGation Patents at PTAB

In a nod to Mark Twain’s famous quote, the rumors of the death of IP Edge are greatly exaggerated. It appears the prolific NPE aggregator has either sold or transferred at least one portfolio (and potentially up to 40) to a new entity, Inferential Capital, LLC, which after hiring, has begun asserting again—more below.  On the stats, it was a slightly below average week at both the Patent Trial and Appeal Board (PTAB) and in the district courts. At the PTAB, there were 25 new patent filings, with one post-grant review and 24 inter partes reviews (IPR). 

Michael Best is Seeking an IP Associate or Patent Agent (Organic Chemistry)

Michael Best & Friedrich LLP is seeking a Junior to Midlevel Associate or Patent Agent to join the Life Sciences subgroup of the Intellectual Property practice group. The Agent or Associate must have 2+ years of patent prosecution experience at a firm or in-house, and the ability to draft patent applications is a must. The ideal candidate will have a Ph.D. in Chemistry, Organic Chemistry, Molecular Biology, or a B.S. in Chemical Engineering. Admission to the USPTO is preferred. The candidate must excel in a team environment and be a highly-motivated self-starter with excellent business judgment, the ability to communicate clearly with clients, and the flexibility to thrive in a fast-paced environment. This full-time, permanent position will work out of one of our Chicago, Salt Lake City, Wisconsin, or North Carolina offices.

EUIPO Refers First Questions on EUTMR Interpretation to Grand Board

The European Union Intellectual Property Office (EUIPO) announced today that it has for the first time referred 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 Office’s 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. The process is meant to address situations in which an EUTM faces a ground of non-registrability in one or several Member States; through conversion, “the EUTM applicant can convert the EUTM into one or more trade mark applications in the Member States not affected by the problem,” explained the Executive Director’s Referral of Questions.

An Independent Musician’s Perspective on the TikTok Legislation Before Congress

There are many loud voices making a lot of noise about TikTok right now, and as someone who makes “noise” for a living, I thought I’d provide an independent musician’s perspective on the TikTok legislation before Congress: I hope it passes, both as an American and as a music maker. First of all, this bill restricts TikTok, it does not “ban” the app. It forces the company to cut its ties to the Chinese Communist Party and prevents them from accessing the data of Americans. That’s a good thing. The bill doesn’t mandate or regulate speech, it’s focused on national security. The threat is no secret, it’s real: the Federal Communications Commission (FCC) called TikTok “a clear and present danger” to our country.

Michael Best is Seeking a Partner Level Advertising & Promotions Attorney

Michael Best & Friedrich LLP is seeking an experienced Advertising, Marketing, and Promotions Partner to help grow our Advertising and Brand Protection team. The ideal candidate will have significant expertise in traditional and new media advertising, marketing, and promotions matters and embrace the opportunity to help grow our nationally recognized practice. We have offices in Wisconsin (Milwaukee, Madison, Manitowoc, Waukesha), Illinois (Chicago), Utah (Cottonwood Heights, Salt Lake City), Colorado (Denver, Broomfield), Texas (Austin), and North Carolina (Charlotte, Raleigh, Wilmington), and Washington D.C. This is a full-time, permanent position located in any of our office locations.

Ninth Circuit Says District Court Properly Canceled Cannabis Trademark Applications for Lack of Bona Fide Intent to Use

On April 1, the U.S. Court of Appeals for the Ninth Circuit issued a ruling in BBK Tobacco & Foods LLP v. Central Coast Agriculture, Inc. affirming a lower court’s ruling that canceled trademark applications pending at the U.S. Patent and Trademark Office (USPTO). The Ninth Circuit panel majority determined that the district court had statutory authority to invalidate a trademark application for no bona fide intent to use over a dissent authored by U.S. Circuit Judge Patrick Bumatay, who argued that district courts lacked the authority to cancel trademarks before registration by the USPTO.