Intellectual Property
Showing 17–32 of 336 results
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Federal Circuit finds genus didn’t anticipate species
April / May 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 445
Abstract: Does the disclosure of a chemical genus render all of the species within it “inherently obvious” and therefore unpatentable? Not always, as the challenger in Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp. learned. This article discusses the court’s finding that the class at issue didn’t meet the “at once envisage” standard for an invention to be inherently anticipated. Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp., No. 21-2121 (Fed. Cir. Sept. 29, 2022).
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Challenger, beware – PTO director sanctions abuse of IPR process
April / May 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 578
Abstract: Well-known technology giant Intel has been at war with a patent holding company for years. Recently, a new company inserted itself into the proceedings, apparently hoping to cash in. In an unusual move, the director of the U.S. Patent and Trademark Office (PTO) got involved in the case, OpenSky Industries, LLC v. VLSI Technology LLC. This article highlights how things went downhill for the newcomer from there. OpenSky Industries, LLC v. VLSI Technology LLC, IPR No. 2021-01064 (PTO Dir. Oct. 4, 2022).
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TKO: Standing argument in copyright case falls
April / May 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 656
Abstract: A copyright owner can’t give someone an exclusive enforceable right in a live event after the event has already occurred, right? That’s what the defendants in Joe Hand Promotions, Inc. v. Griffith recently contended. But their argument fell short in light of some special circumstances. This article reviews the court’s finding that copyright law allows an owner to sue for infringement of an unregistered copyright as long as it registers the copyright within three months of the broadcast. Joe Hand Promotions, Inc. v. Griffith, No. 21-6088 (6th Cir. Sept. 21, 2022).
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When similar trademarks don’t create likelihood of confusion
April / May 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 833
Abstract: The Trademark Trial and Appeal Board (TTAB) recently snuffed out opposition to a trademark registration for the mark “SMOKES.” To the surprise of some, it determined that consumers were unlikely to confuse it with the existing mark “SMOK.” This article reviews how the board distinguished between the two seemingly similar marks in Shenzhen IVPS Technology Co. Ltd. v. Fancy Pants Products, LLC. A brief sidebar highlights the TTAB’s finding that Shenzhen didn’t establish a family of marks. Shenzhen IVPS Technology Co. Ltd. v. Fancy Pants Products, LLC, Opp. No. 91263919 (TTAB Oct. 31, 2022).
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Game on! Ninth Circuit revives trade dress infringement claim
February / March 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 441
Abstract: Two competing companies created their own three-foot-wide versions of the popular game “four-in-a-row” or “horizontal checkers.” P&P Imports (P&P) was trying to claim trade dress in the design of its four-in-a-row apparatus and color scheme. This article summarizes the ensuing trade dress dispute between P&P and another gaming company, and the decision of the U.S. Court of Appeals for the Ninth Circuit describing the proper standard for “secondary meaning.” P and P Imports LLC v. Johnson Enterprises LLC, DBA Tailgating Pros, Nos. 21-55013; -55323 (9th Cir. Aug. 24, 2022).
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Product-by-process analysis dooms challenged patent
February / March 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 548
Abstract: The U.S. Court of Appeals for the Federal Circuit has invalidated a previously issued patent based on what it deemed a “product-by-process” claim. This article reviews the court’s finding that it wasn’t enough that the process part of the claim was different from existing processes — the product part also needed patentable differences. Kamstrup A/S v. Axioma Metering UAB, No. 21-1923 (Fed. Cir. Aug. 12, 2022).
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DMCA development – Standard for removal of digital copyright info comes into focus
February / March 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 637
Abstract: The U.S. Court of Appeals for the Eleventh Circuit is making it tough for digital copyright holders to allege violations of the Digital Millennium Copyright Act (DMCA) based on the removal of copyright management information (CMI). In doing so, the court agreed with other appellate courts that a plaintiff must establish “double scienter” by the defendant. This article reviews the court’s decision. Victor Elias Photography, LLC v. Ice Portal, Inc., No. 21-11892 (11th Cir. Aug. 12, 2022).
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Clarifying patent law’s recapture bar
February / March 2023
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 847
Abstract: Patent applicants sometimes amend their original applications in response to a patent examiner’s rejection — for example, adding or withdrawing elements so that the invention isn’t obvious and, thus, unpatentable. Such amendments can have long-standing effects, though, as one inventor learned the hard way when he tried to obtain a reissue patent. This article reviews the court’s ruling, which is a strong reminder that deliberately limiting patent claims will preempt the possibility of recapture in a patent reissue. A short sidebar highlights how a defective inventor declaration also doomed the reissue application. In re McDonald, No. 21-1697 (Fed. Cir. Aug. 10, 2022).
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PTO makes genericness refusals for marks more likely
Year End 2022
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 412
Abstract: The U.S. Patent and Trademark Office (PTO) recently issued Examination Guide 1-22, “Clarification of Examination Evidentiary Standard for Marks Refused as Generic.” In it, the PTO clarifies its previous position on the evidentiary burden when a trademark examining attorney seeks to refuse to register a mark in the Principal or Supplemental Register because the mark is generic. This article briefly explains the new standard, which diverges from longstanding practice. Examination Guide 1-22, “Clarification of Examination Evidentiary Standard for Marks Refused as Generic.”
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Computer Fraud and Abuse Act – “Scraping” public data probably doesn’t violate CFAA
Year End 2022
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 626
Abstract: The U.S. Court of Appeals for the Ninth Circuit has again determined that the automated “scraping” of an online networking platform’s publicly available data probably doesn’t violate the Computer Fraud and Abuse Act (CFAA). The U.S. Supreme Court had directed the appellate court to reconsider its earlier determination based on a subsequent high court ruling on the CFAA. But, in the end, the Ninth Circuit found that it was right all along. This article reviews the court’s determination that when a computer network generally permits public access to its data, a user’s accessing of that data likely won’t qualify as unauthorized access under the CFAA. hiQ Labs, Inc. v. LinkedIn Corp., No. 17-16783, -2038 (9th Cir. April 18, 2022).
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Silence isn’t always golden – Patent specification doesn’t adequately describe negative limitation
Year End 2022
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 557
Abstract: If at first you don’t succeed, try again. The old bromide proved surprisingly meaningful for a pharmaceutical company challenging a competitor’s patent on a treatment method. The claim that the patent lacked an adequate written description of the method’s “negative limitation” was initially rejected by a three-judge panel of the U.S. Court of Appeals for the Federal Circuit. This article looks at how the tables turned when the company requested a rehearing before the panel after one judge retired and was replaced. Novartis Pharmaceuticals Corp. v. Accord Healthcare, Inc., No. 21-1070 (Fed. Cir. June 21, 2022).
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Typo spells the end of patent challenge
Year End 2022
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 862
Abstract: What happens when a patent is challenged as being obvious based on a previous patent, but the earlier patent contains a typographical error? It depends on how obvious the error is. The U.S. Court of Appeals for the Federal Circuit recently found such a patent error obvious — even though the error wasn’t discovered until an expert conducted extensive analysis 20 years after the error was first published. The result: The earlier patent didn’t disclose the subsequent invention, and the later patent wasn’t invalidated in view of the prior, errant disclosure. This article discusses the law governing typographical errors in patents. A brief sidebar highlights the dissenting judge’s opinion that, while agreeing that the majority applied the proper standard, the error at issue was not only typographical. LG Electronics Inc. v. ImmerVision, No. 21-2037, -2038 (Fed. Cir. July 11, 2022).
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How “generic skepticism” affects the motivation to combine
October / November 2022
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 448
Abstract: The U.S. Court of Appeals for the Federal Circuit gave new life to a challenge of a robotic surgery patent after rejecting the relevance of surgeons’ skepticism for robotic surgery. This article examines a decision holding that the U.S. Patent Trial and Appeal Board (PTAB) improperly found such generic skepticism about a field — as opposed to skepticism about a specific invention — rendered the patented invention nonobvious. Auris Health, Inc. v. Intuitive Surgical Operations, Inc., No. 21-1732 (Fed. Cir. April 29, 2022).
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Court revives patent case – Descriptive terms weren’t “indefinite” after all
October / November 2022
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 571
Abstract: Coming up with a new and useful invention is only part of the battle when it comes to obtaining a patent. Patent applicants also need to choose their words carefully when drafting the application. This article looks at a recent ruling from the U.S. Court of Appeals for the Federal Circuit that highlights one of the most important considerations: what a patent’s words communicate to skilled artisans in the relevant field. Niazi Licensing Corp. v. St. Jude Medical S.C., Inc., No. 21-1864 (Fed. Cir. April 11, 2022).
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Copyright infringement ruling strikes a chord
October / November 2022
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 621
Abstract: The music world is sitting up and taking note of another significant court ruling on the availability of copyright protection for elements of songs. The court’s decision emphasizes that common “building blocks” of music aren’t copyrightable. This article covers the court’s application of a two-part test with “extrinsic” and “intrinsic” components and its conclusion that no individual component of the plaintiff’s ostinato (a repeating instrumental figure) was copyrightable. Gray v. Hudson, No. 20-55401 (9th Cir. March 10, 2022).
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Better late than never – When tardiness bars trademark infringement claims
October / November 2022
Newsletter: Ideas on Intellectual Property Law
Price: $225.00, Subscriber Price: $157.50
Word count: 887
Abstract: A lack of haste can make waste when it comes to filing a lawsuit. But some delays are excusable. This article reviews a dispute over the use of a trademark by two players in the insurance industry. It provides useful insight into when a trademark holder’s delay will — or won’t — bar its claims. A short sidebar highlights the appellate court’s rejection of the trial court’s reliance on a cease-and-desist letter to show how long the plaintiff was aware of the risk of consumer confusion between the trademarks at issue. A.I.G. Agency, Inc. v. American Int’l Group, Inc., No. 21-1948 (8th Cir. May 13, 2022).