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IP Newsletter February / March 2021

February 1, 2021

Behind the curtain
“Jersey Boys” doesn’t violate copyright on autobiography
The long-running Broadway musical “Jersey Boys” chronicles the history of the band known as the Four Seasons — and spawned copyright litigation that has run nearly as long as the play itself. This article discusses the latest ruling from the U.S. Court of Appeals for the Ninth Circuit, which found that because facts can’t form the basis for a copyright claim, and all of the alleged similarities were based on elements that were treated as fact in the manuscript, the plaintiff’s manuscript was unprotected.
Corbello v. Valli, No. 17-1637 (9th Cir. Sept. 8, 2020).

“Method of preparation” involving natural phenomenon is patent-eligible
The U.S. Court of Appeals for the Federal Circuit has taken the unusual step of modifying and clarifying an earlier opinion considering whether an invention related to a natural phenomenon was patent-eligible. Although the case deals with a “method of preparation,” this article looks at why it may also provide some valuable clues on how best to structure diagnostic claims to increase the odds of patent eligibility.
Illumina, Inc. v. Ariosa Diagnostics, Inc., No. 19-1419 (Fed. Cir. Aug. 3, 2020); Association for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013).

Don’t let patent licensing missteps cost you
The owner of three software-related patents can attest to the highs and lows of patent litigation after the U.S. Court of Appeals for the Federal Circuit ruled in its case. Unlike other patents challenged as patent-ineligible under the so-called Alice test, its patents were upheld — but the patentee lost out on millions in pre-suit damages due to a licensing misstep. This article examines the case and reminds readers not to make the same mistake.
Packet Intelligence LLC v. Netscout Systems, Inc., No. 19-2041 (Fed. Cir. July 14, 2020).

Who can file for trademark cancellation?
The U.S. Court of Appeals for the Federal Circuit recently held that parties can pursue cancellation of a trademark even if they don’t show a proprietary interest in the contested mark. This article reviews the case and why owners of registered trademarks could see an uptick in attempts to cancel those marks.
Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, No. 19-1567 (Fed. Cir. July 27, 2020).

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