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February / March 2023 IP Newsletter

Clarifying patent law’s recapture bar
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).

DMCA development: Standard for removal of digital copyright info comes into focus
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).

Product-by-process analysis dooms challenged patent
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).

Game on! Ninth Circuit revives trade dress infringement claim
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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