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October / November 2022 IP Newsletter

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Better late than never
When tardiness bars trademark infringement claims
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).

Copyright infringement ruling strikes a chord
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).

Court revives patent case
Descriptive terms weren’t “indefinite” after all
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).

How “generic skepticism” affects the motivation to combine
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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