SCOTUS rejects fair use defense in Warhol copyright case
Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 21-869 (U.S. May 18, 2023).

Supreme Court finds trademark owners can’t sue for foreign infringement
Abitron Austria GmbH v. Hetronic Int’l, Inc., No. 21-1043 (U.S. June 29, 2023).

Barking up the wrong tree: Supreme Court limits trademark parodies
Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148 (U.S. June 8, 2023).

Too many cooks in the kitchen: Who’s an inventor?
HIP, Inc. v. Hormel Foods Corp., No. 22-1696 (Fed. Cir. May 2, 2023).

Identifying an inventor on a patent application can be a complex analysis. This short article highlights a recent ruling from the U.S. Court of Appeals for the Federal Circuit that sheds light on the degree of contribution required to qualify as an inventor.
HIP, Inc. v. Hormel Foods Corp., No. 22-1696 (Fed. Cir. May 2, 2023).

In a unanimous decision, the U.S. Supreme Court has for the first time considered the so-called Rogers test regarding the use of trademarks in “expressive works” — in this case, a dog toy mocking a famous whiskey brand. This article explains how the Court’s ruling in Jack Daniel’s Properties, Inc. v. VIP Products LLC, makes clear that liability for both trademark infringement and trademark dilution is heavily dependent on just how a defendant uses another’s mark.
Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148 (U.S. June 8, 2023).

The U.S. Supreme Court has limited the reach of the Lanham Act, the federal trademark law, beyond American borders. The Court’s ruling in Abitron Austria GmbH v. Hetronic Int’l, Inc. could make trademark owners more vulnerable to global piracy of their goods. This article reviews the Court’s finding, the result being that U.S. trademark owners may be inadequately protected in a global marketplace. Abitron Austria GmbH v. Hetronic Int’l, Inc., No. 21-1043 (U.S. June 29, 2023).

The U.S. Supreme Court has issued its much-anticipated ruling in a case that drew attention partly because it involved two widely renowned artists: the musician Prince and the visual artist Andy Warhol. More importantly, though, the high court weighed in on some of the limits of the fair use defense to copyright infringement. This article covers the fair use doctrine and its application in the case, notably that the original photo and the copying use shared substantially the same purpose. A short sidebar discusses other Warhol works that make an artistic commentary on consumerism, and thus had a different purpose from the original image.
Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 21-869 (U.S. May 18, 2023).

A slicing opinion: Court cuts trademark registration for Gruyere cheese
Swiss and French cheesemakers sought to obtain a trademark for the term GRUYERE. This article is about widespread agreement among the Trademark Trial and Appeal Board (TTAB) and two federal courts that the term is generic and therefore ineligible for trademark protection. 
Interprofession du Gruyere; Syndicat Interprofessionnel du Gruyere. v. U.S. Dairy Export Council; Atalanta Corporation; Intercibus, Inc., No. 22-1041 (4th Cir. March 3, 2023).

PTO director issues critical IPR clarification
This article reviews the USPTO director's opinion about how the PTAB should determine whether to institute an IPR of a patent when parallel litigation is already proceeding in federal district court.
CommScope Techs. LLC v. Dali Wireless, Inc., IPR No. 2022-01242 (PTO Feb. 27, 2023).

Only if it’s human: setting the copyright standard for works with AI-generated content
This article summarizes the US Copyright Office guidance regarding works created solely by AI and those created with AI assistance.

How to evaluate the patentability of a multiple dependent claim
This article untangles the USPTO director’s finding regarding patent dependent claims that have multiple dependencies — a popular claim drafting format in other countries, but a rather expensive pursuit in the United States. 
Nested Bean, Inc. v. Big Beings USA Pty. Ltd., IPR No. 2020-01234 (PTO Feb. 24, 2023).

Some Swiss and French cheesemakers recently ran into a brick wall when they attempted to obtain a trademark for the term GRUYERE. There was widespread agreement among the Trademark Trial and Appeal Board (TTAB) and two federal courts that the term is generic and therefore ineligible for trademark protection. This article covers the court’s review of the claim. A short sidebar highlights the trial court’s reliance on the U.S. Food and Drug Administration’s standard of identity when determining whether the term GRUYERE was generic.
Interprofession du Gruyere; Syndicat Interprofessionnel du Gruyere. v. U.S. Dairy Export Council; Atalanta Corporation; Intercibus, Inc., No. 22-1041 (4th Cir. March 3, 2023).

The director of the U.S. Patent and Trademark Office recently addressed confusion over how the Patent Trial and Appeal Board (PTAB) should determine whether to institute an inter partes review (IPR) of a patent when parallel litigation is already proceeding in federal district court. This article reviews the opinion, which makes clear that, while it’s possible to obtain an IPR in such circumstances, it won’t be easy.
CommScope Techs. LLC v. Dali Wireless, Inc., IPR No. 2022-01242 (PTO Feb. 27, 2023).

Artificial intelligence (AI) is disrupting a wide range of industries, including those involving the textual, visual and audio arts. It’s little surprise, then, that the U.S. Copyright Office has seen an increase in applications for copyright protection for AI-generated works. In response, the office released its first formal guidance regarding works containing material generated by AI in March 2023. This article summarizes the guidance, concluding that the future isn’t bright for works created solely by AI, but prospects are better for works that are merely AI-assisted.

A patent’s claims can get confusing, particularly when a patent’s dependent claims have multiple dependencies — a popular claim drafting format in other countries, but a rather expensive pursuit in the United States. The director of the U.S. Patent and Trademark Office might agree after stepping in to address how the Patent Trial and Appeal Board should evaluate the patentability of a multiple dependent claim. This article untangles the director’s finding.
Nested Bean, Inc. v. Big Beings USA Pty. Ltd., IPR No. 2020-01234 (PTO Feb. 24, 2023).

Whose idea was this? Determination of patent inventorship issue requires trial
This article covers a recent ruling from the U.S. Court of Appeals for the Federal Circuit between actual contributions to an invention and “more prosaic” contributions to the process. A brief sidebar looks at why an overwhelming amount of evidence wasn’t enough for summary judgment.
Plastipak Packaging, Inc. v. Premium Waters, Inc., No. 21-2244 (Fed. Cir. Dec. 19, 2022).

Amended trademark registration raises suspicion
Can a trademark holder facing a cancellation proceeding avoid judgment by simply deleting goods from its registration? The Trademark Trial and Appeal Board (TTAB) recently addressed this question for the first time — and the answer shouldn’t surprise you.
Ruifei (Shenzhen) Smart Technology Co., Ltd. v. Shenzhen Chengyan Science and Technology Co, Ltd., Cancellation No. 92077931 (TTAB Jan. 12, 2023); https://ttabvue.uspto.gov/ttabvue/v?pno=92077931&pty=CAN&eno=19.

Minimal creativity required to secure copyright protection
A dispute between two testing companies is the latest example of the bar for how much creativity is necessary to secure copyright protection. This article reviews the case and the court’s reasoning behind it finding that the plaintiff’s creative choices merited copyright protection.
ACT, Inc. v. Worldwide Interactive Network, Inc., No. 21-5889, -5907, -6155 (6th Cir. Aug. 23, 2022).

Dictionary finishes third in patent claim construction
Dictionaries have their place, but when it comes to interpreting the meaning of patent terms, that place generally isn’t first. This article reviews a case from the U.S. Court of Appeals for the Federal Circuit in which it laid out just when the dictionary may play a role in such “claim construction.”
Grace Instrument Indus., LLC v. Chandler Instruments Co., LLC, No. 21-2370 (Fed. Cir. Jan. 12, 2023).

In patent law, the line between actual contributions to an invention and “more prosaic” contributions to the process can be difficult to draw. This article covers a recent ruling from the U.S. Court of Appeals for the Federal Circuit that drives this home. A brief sidebar looks at why an overwhelming amount of evidence wasn’t enough for summary judgment.
Plastipak Packaging, Inc. v. Premium Waters, Inc., No. 21-2244 (Fed. Cir. Dec. 19, 2022).

Can a trademark holder facing a cancellation proceeding avoid judgment by simply deleting goods from its registration? The Trademark Trial and Appeal Board (TTAB) recently addressed this question for the first time. This article summarizes the TTAB’s conclusion that a respondent couldn’t moot the proceeding and avoid judgment as to deleted goods by deleting certain goods subject to the cancellation without the written consent of the petitioner.

Ruifei (Shenzhen) Smart Technology Co., Ltd. v. Shenzhen Chengyan Science and Technology Co, Ltd., Cancellation No. 92077931 (TTAB Jan. 12, 2023); https://ttabvue.uspto.gov/ttabvue/v?pno=92077931&pty=CAN&eno=19.

A dispute between two testing companies is the latest example of the bar for how much creativity is necessary to secure copyright protection. This article reviews the case and the court’s reasoning behind it finding that the plaintiff’s creative choices merited copyright protection.
ACT, Inc. v. Worldwide Interactive Network, Inc., No. 21-5889, -5907, -6155 (6th Cir. Aug. 23, 2022).

Dictionaries have their place, but when it comes to interpreting the meaning of patent terms, that place generally isn’t first. This article reviews a case from the U.S. Court of Appeals for the Federal Circuit in which it laid out just when the dictionary may play a role in such “claim construction.”
Grace Instrument Indus., LLC v. Chandler Instruments Co., LLC, No. 21-2370 (Fed. Cir. Jan. 12, 2023).

When similar trademarks don’t create likelihood of confusion
This article reviews how the TTAB distinguished between 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).

TKO: Standing argument in copyright case falls
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).

Challenger, beware, PTO director sanctions abuse of IPR process
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 USP{TO got involved in the OpenSky case.
OpenSky Industries, LLC v. VLSI Technology LLC, IPR No. 2021-01064 (PTO Dir. Oct. 4, 2022).

Federal Circuit finds genus didn’t anticipate species
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. 
Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp., No. 21-2121 (Fed. Cir. Sept. 29, 2022).

When similar trademarks don’t create likelihood of confusion
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)

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).

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).

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).

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).

Clarifying patent law’s recapture bar
This article discusses patent applicants in which the original application was amended in response to a patent examiner’s rejection Such amendments can have long-standing effects, though, as one inventor learned the hard way when he tried to obtain a reissue patent. 
In re McDonald, No. 21-1697 (Fed. Cir. Aug. 10, 2022).

DMCA development: Standard for removal of digital copyright info comes into focus
This article reviews the U.S. Court of Appeals for the Eleventh Circuit's decision regarding digital copyright holders and alleged 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. 
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
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).

This article reviews the U.S. Court of Appeals for the Eleventh Circuit's decision regarding digital copyright holders and alleged 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. 
Victor Elias Photography, LLC v. Ice Portal, Inc., No. 21-11892 (11th Cir. Aug. 12, 2022).

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).

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).

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).

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.”

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).

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).

Typo spells the end of patent challenge
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).

Silence isn’t always golden
Patent specification doesn’t adequately describe negative limitation
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).

Computer Fraud and Abuse Act
“Scraping” public data probably doesn’t violate CFAA
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).

PTO makes genericness refusals for marks more likely
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.”

"Enforcement in the Metaverse," by Michelle Ciotola and David Kincaid in The Trademark Lawyer Magazine's special supplement, NFTs, Cryptocurrency & the Metaverse, published in November 2022. 

Better late than never - When tardiness bars trademark infringement claims
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.I.G. Agency, Inc. v. American Int’l Group, Inc., No. 21-1948 (8th Cir. May 13, 2022).

Copyright infringement ruling strikes a chord
This article covers the court’s application of a two-part test with “extrinsic” and “intrinsic” components.
Gray v. Hudson, No. 20-55401 (9th Cir. March 10, 2022).

Court revives patent case - Descriptive terms weren’t “indefinite” after all
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
This article examines a decision holding that the 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).

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).

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).

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 onobvious.
Auris Health, Inc. v. Intuitive Surgical Operations, Inc., No. 21-1732 (Fed. Cir. April 29, 2022).

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).

Isn’t it obvious?
Presumption of obviousness knocks out patent
Almirall, LLC v. Amneal Pharmaceuticals, LLC, No. 20-2331 (Fed. Cir. March 14, 2022)

Patent’s on-sale bar drains damages
Junker v. Medical Components, Inc., No. 21-1649 (Fed. Cir. Feb. 10, 2022)

Package it up
Bakery’s trade dress claim falls
Bimbo Bakeries USA, Inc. v. Sycamore, No. 18-4062, -4031, -4040 (10th Cir. March 18, 2022)

AI works shut out from copyright protection
Second Request for Reconsideration for Refusal to Register a Recent Entrance to Paradise (Copyright Review Board Feb. 14, 2022)

Patents that specify ranges ­— for example, a range of concentrations in a topical composition — can run into a presumption of obviousness that results in their inventions being deemed unpatentable. This case reviews a case in which a pharmaceutical company ran into just that problem when the ranges cited in its patent for a skin treatment overlapped with those in some so-called “prior art.” A brief sidebar highlights the court’s conclusion that the requisite reasonable expectation of success can exist without “absolute predictability of success.”
Almirall, LLC v. Amneal Pharmaceuticals, LLC, No. 20-2331 (Fed. Cir. March 14, 2022).

When designing product packaging, companies generally want it to clearly identify their products. In Bimbo Bakeries USA, Inc. v. Sycamore, the U.S. Court of Appeals for the Tenth Circuit has ruled that a baking company’s trade dress used elements so customary in the industry that it was generic and not subject to trademark protection under the federal trademark law known as the Lanham Act. This articles summarizes the court’s findings.
Bimbo Bakeries USA, Inc. v. Sycamore, No. 18-4062, -4031, -4040 (10th Cir. March 18, 2022).

Artificial intelligence (AI) has made inroads in a wide array of areas, but it has yet to break down the barriers to copyright protection. The U.S. Copyright Office continues to refuse to register a copyright on works created by AI. This article reviews a decision by the Review Board of the U.S. Copyright Office (board) explaining its reasoning earlier this year.
Second Request for Reconsideration for Refusal to Register a Recent Entrance to Paradise (Copyright Review Board Feb. 14, 2022).

IPLS Proceedings published Thomas J. Mango's article, "Federal Jurisdiction Not Granted Based on Possible Trademark Injury."

Michelle Ciotola's article, Awaiting Clarity in Fair Use, appears in The Trademark Lawyer Magazine, Issue 3, 2022.

"Don't forget the NFTs: IP due diligence for emerging technologies," by Partners Michelle Ciotola and David Kincaid, published in The Trademark Lawyer Magazine, Issue 2, 2022. 

A notable shift
Software survives patent-eligibility test
Mentone Solutions LLC v. Digi Int’l Inc., No. 21-1202 (Fed Cir. Nov. 15, 2021); Two-Way Media Ltd. v. Comcast Cable Communications, 874 F.3d 1329, 124 U.S.P.Q.2d 1521 (Fed. Cir. 2017); CosmoKey Solutions GmbH & Co. KG v. Duo Security LLC, No. 20-2043 (Fed Cir. Oct. 4, 2021).
 
Off the leash
Design copyright case gets another life
Cat and Dogma, LLC v. Target Corp., No. 20-50674 (5th Cir. Oct. 8, 2021).
University of Strathclyde v. Clear-Vu Lighting, LLC, No. 20-2243 (Fed Cir. Nov. 4, 2021).
 
USPTO announces new trademark sanctions process
The U.S. Patent and Trademark Office (USPTO) recently announced a new administrative process it will wield to investigate improper submissions filed with the USPTO in trademark matters. 
 
Post-AIA patents aren’t immune to interference proceedings
SNIPR Tech. Ltd. v. The Rockefeller University, Pat. Interf. No. 106,123 (PTAB Nov. 19, 2021).

When the America Invents Act changed the U.S. patent system from a “first to invent” to “first inventor to file for a patent” system, it created some confusion. For example, questions arose about the applicability of interference proceedings to patent applications filed after the “first to file” provision took effect on March 16, 2013. This article discusses SNIPR Tech. Ltd. v. The Rockefeller University, in which the Patent Trial and Appeal Board has attempted to provide some clarity.
SNIPR Tech. Ltd. v. The Rockefeller University, Pat. Interf. No. 106,123 (PTAB Nov. 19, 2021).

Patents covering software can face an uphill battle when challengers contend the software is actually a patent-ineligible abstract idea. In Mentone Solutions LLC v. Digi Int’l Inc., the U.S. Court of Appeals for the Federal Circuit recently upheld one such patent. This article sheds some light on how these patents can withstand judicial scrutiny.
Mentone Solutions LLC v. Digi Int’l Inc., No. 21-1202 (Fed Cir. Nov. 15, 2021); Two-Way Media Ltd. v. Comcast Cable Communications, 874 F.3d 1329, 124 U.S.P.Q.2d 1521 (Fed. Cir. 2017); CosmoKey Solutions GmbH & Co. KG v. Duo Security LLC, No. 20-2043 (Fed Cir. Oct. 4, 2021)

A common phrase such as “I love you” written in a lower-case cursive, italicized font on garments can’t possibly be copyrightable, right? Probably not, but as this article shows in a ruling from the U.S. Court of Appeals for the Fifth Circuit in Cat and Dogma, LLC v. Target Corp. a design using such a phrase may gain copyright protection.
Cat and Dogma, LLC v. Target Corp., No. 20-50674 (5th Cir. Oct. 8, 2021).

The U.S. Patent and Trademark Office (USPTO) has taken another step in its ongoing campaign to protect the integrity of the trademark register. It recently announced a new administrative process it will wield to investigate improper submissions filed with the USPTO in trademark matters. This article summarizes the newest USPTO sanctions process.

Screenwriter’s copyright returns from the dead
Labor law doesn’t control work-for-hire determination
This article reviews the employment status — and thus copyright ownership — of a screenwriter for the successful “Friday the 13th” movies. 
Horror, Inc. v. Miller 

Failures of “prior art” undermine obviousness challenge to patent
University of Strathclyde v. Clear-Vu Lighting 

Potential trademark injury not enough for federal jurisdiction
Brooklyn Brewery Corp. v. Brooklyn Brew Shop

Federal Circuit limits disqualifying prior art for design patents
Federal Circuit limits disqualifying prior art for design patents.
In re: SurgiSil

Can the existence of a similar-looking art tool anticipate or render obvious a patent for the design of an item used in plastic surgery? Fortunately for a design patent applicant in In re: SurgiSil, L.L.P., the U.S. Court of Appeals for the Federal Circuit found that the Patent Trial and Appeal Board erred in finding that the art tool anticipated a lip implant, rendering the implant’s design unpatentable. This article summarizes the case and the concept of “anticipation.”
In re: SurgiSil, L.L.P., No. 20-1940 (Fed Cir. Oct. 4, 2021).

Employee or independent contractor? The answer is critical for a variety of rights, and multiple tests have been developed under employment law. But, in Horror, Inc. v. Miller, the U.S. Court of Appeals for the Second Circuit found those tests aren’t determinative when it comes to copyright issues. This article reviews the employment status — and thus copyright ownership — of a screenwriter for the successful “Friday the 13th” movies.
Horror, Inc. v. Miller, No. 18-3123 (2d Cir. Sept. 30, 2021).

For the first time, the U.S. Court of Appeals for the Federal Circuit recently considered what a trademark challenger must show to establish the standing required under the U.S. Constitution to appeal a decision of the Trademark Trial and Appeal Board (TTAB). This article summarizes the court’s conclusion in Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, which resulted in a mixed bag for one challenger.
Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, No. 20-2277 (Fed Cir. Oct. 27, 2021).

"Prior art" can make a patent obvious and therefore unpatentable. But what about previous research that fails? Does it defeat a patent for an invention that succeeded? This article reviews a decision from the U.S. Court of Appeals for the Federal Circuit, which found that where the prior art shows only failures to achieve what the inventor accomplished, the court couldn’t find an expectation of success based on that prior art. University of Strathclyde v. Clear-Vu Lighting, LLC, No. 20-2243 (Fed Cir. Nov. 4, 2021).

Is limited online access to copyrighted work a “public display”?
Bell v. Wilmott Storage Svcs., LLC, No. 19-5582, -56181 (9th Cir. Sept. 9, 2021).

Failure to mark reduces patentee’s infringement recovery
Lubby Holdings LLC v. Chung, No. 19-2286 (Fed. Cir. Sept. 1, 2021).

Words matter
NDA language doesn’t protect trade secrets indefinitely
BladeRoom Group Ltd. v. Emerson Electric Co., No. 19-16583 (9th Cir. Aug. 30, 2021).

TTAB still constitutional post-Arthrex
Piano Factory Group, Inc. v. Schiedmayer Celesta GMBH, No. 20-1196 (Fed. Cir. Sept. 1, 2021).

Last year, the U.S. Supreme Court found that the Patent Trial and Appeal Board’s administrative patent judges could constitutionally perform their duties only if they were appointed by the president and confirmed by the Senate. This case summarizes the U.S. Court of Appeals for the Federal Circuit’s finding on whether this reasoning applies to the Trademark Trial and Appeal Board’s administrative trademark judges.
Piano Factory Group, Inc. v. Schiedmayer Celesta GMBH, No. 20-1196 (Fed. Cir. Sept. 1, 2021).

If no one sees an unauthorized online copy of a photo, has it truly been “publicly displayed” as required for a copyright infringement lawsuit? The U.S. Court of Appeals for the Ninth Circuit recently answered that question in the affirmative in a case brought by a plaintiff who one judge characterized as a “copyright troll.”
Bell v. Wilmott Storage Svcs., LLC, No. 19-5582, -56181 (9th Cir. Sept. 9, 2021).

Patent holders may think that their patents mean they can recover reasonable royalty damages on all infringers’ sales of their infringing products. But this isn’t necessarily the case. This article reviews a case in which the court notes that a patent holder who hasn’t complied with the marking requirement of the federal Patent Act may be awarded limited damages — even if the defendant admits it was aware of the patent.
Lubby Holdings LLC v. Chung, No. 19-2286 (Fed. Cir. Sept. 1, 2021).

Most owners of a trade secret would want to keep it, well, secret. But the wording in a nondisclosure agreement (NDA) can inadvertently undermine that goal. This article discusses a case in which the court reviewed this potentially very costly lesson.
BladeRoom Group Ltd. v. Emerson Electric Co., No. 19-16583 (9th Cir. Aug. 30, 2021).

Establishing infringement of “thin” copyrights
Design Basics, LLC v. Signature Construction, Inc., Nos. 19-2716 (7th Cir. April 23, 2021); Design Basics, LLC v. Lexington Homes, Inc., 858 F.3d 1093 (7th Cir. 2017).

Supreme Court shakes up the PTAB
U.S. v. Arthrex, Inc., No. 19-1434 (U.S. June 21, 2021).

SCOTUS upholds, but limits, “assignor estoppel”
Minerva Surgical, Inc. v. Hologic, Inc., No. 20-440 (U.S. June 29, 2021).

What constitutes an “exceptional case”? Court adopts new standard for attorneys’ fees in trademark cases
Derma Pen, LLC v. 4EverYoung Limited, No. 19-4114 (U.S. June 8, 2021).

It seems like a simple matter of fairness that an inventor who assigns its patent rights can’t later challenge the validity of the underlying patent. But, as the U.S. Supreme Court recently explained, assignors can do just that in certain limited circumstances. This article reviews the case and the ability of assignors to challenge a patent’s validity.
Minerva Surgical, Inc. v. Hologic, Inc., No. 20-440 (U.S. June 29, 2021).

A decade after the American Invents Act of 2011 (AIA) brought significant change to the U.S. patent system, the courts and players in the patent regime continue to grapple with some aspects of the law. This article reviews a recent U.S. Supreme Court finding that the Patent Trial and Appeal Board’s administrative patent judges’ power is incompatible with their status as inferior officers. The article also reviews guidance from the U.S. Patent and Trademark Office in the wake of the Court’s holding.
U.S. v. Arthrex, Inc., No. 19-1434 (U.S. June 21, 2021).

The copyright troll, whose business model the U.S. Court of Appeals for the Seventh Circuit has described as an “intellectual property shakedown,” again found its claims under scrutiny by the court. This time, the court took the occasion to clarify what’s necessary for a successful claim of infringement of works with “thin” copyright protection. This article reviews two well-established copyright doctrines: scènes à faire and merger. It looks at how they restrict the ability of infringement plaintiffs to claim expansive intellectual property rights. A brief sidebar details how the copyright troll plaintiff operates.
Design Basics, LLC v. Signature Construction, Inc., Nos. 19-2716 (7th Cir. April 23, 2021); Design Basics, LLC v. Lexington Homes, Inc., 858 F.3d 1093 (7th Cir. 2017).

The U.S. Court of Appeals for the Tenth Circuit has for the first time addressed whether the U.S. Supreme Court’s standard for awarding attorneys’ fees under the Patent Act also applies to such awards under federal trademark law’s Lanham Act. This article summarizes the court’s finding that because the fee provisions in the Patent Act and the Lanham Act are identical, the standard also applies to the Lanham Act.
Derma Pen, LLC v. 4EverYoung Limited, No. 19-4114 (U.S. June 8, 2021).

Copyright’s fair use defense
Court clarifies “transformative use” analysis
The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 19-2420-cv (2d Cir. March 26, 2021).

Alice strikes again
Targeted advertising is patent-ineligible
Free Stream Media Corp. v. Alphonso Inc., Nos. 19-1506, -2133 (Fed. Cir. May 11, 2021).

When is initial-interest confusion trademark infringement actionable?
Select Comfort Corp. v. Baxter, No. 19-1113 (8th Cir. May 11, 2021).

Establishing “actual use” standard in service mark infringement cases
Underwood v. Bank of America Corp., Nos. 19-1349, -1087 (10th Cir. April 30, 2021).

A trademark battle between sellers of adjustable air mattresses led the U.S. Court of Appeals for the Eighth Circuit to put to bed the question of whether it recognizes a trademark infringement theory already accepted by most federal courts of appeal. More than a decade after sidestepping the question, the court confirmed that it views initial-interest confusion as a valid basis for liability. This article examines initial-interest confusion, but notes that the Eighth Circuit made no comment on how such confusion might affect the analysis of remedies and damages.
Select Comfort Corp. v. Baxter, No. 19-1113 (8th Cir. May 11, 2021).

The U.S. Court of Appeals for the Federal Circuit Court has dispatched yet another patented invention to the wasteland of patent-ineligible abstract ideas under the Alice test. This article summarizes the court’s ruling reaffirming that targeted advertising can’t be patented.
Free Stream Media Corp. v. Alphonso Inc., Nos. 19-1506, -2133 (Fed. Cir. May 11, 2021).

In a colorful copyright case involving iconic artists Prince and Andy Warhol, the U.S. Court of Appeals for the Second Circuit agreed with a photographer’s objection to Warhol’s use of her photo of Prince. According to the court, the fair use defense to copyright infringement wasn’t available because Warhol’s series based on the photographer’s photo retains the essential elements of the photo without significantly adding to or altering them. This article summarizes the case, while a short sidebar highlights the proposal by two judges of the U.S. Court of Appeals for the Second Circuit for a different approach to the fair use analysis.
The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, No. 19-2420-cv (2d Cir. March 26, 2021).

The U.S. Court of Appeals for the Tenth Circuit recently faulted a lower court for applying the wrong legal standard when determining whether a service mark infringement plaintiff had actually used the mark. This short article reviews the actual use standard in service mark infringement cases.
Underwood v. Bank of America Corp., Nos. 19-1349, -1087 (10th Cir. April 30, 2021).

Don’t copy that
Lack of implied license results in copyright infringement
MidlevelU, Inc. v. ACI Information Group, No. 20-10856 (11th Cir. March 3, 2021); Latimer v. Roaring Toyz, Inc. (2010).

Functional color scheme isn’t protected trade dress
Sulzer Mixpac AG v. A&N Trading Co., No. 19-2951 (2d Cir. Feb. 18, 2021)

Can you hear us now? SCOTUS says app developers needn’t reinvent the wheel
Google LLC v. Oracle America, Inc., No. 18-956 (U.S. April 5, 2021)

Patentee falls short on proving willful infringement
Bayer Healthcare LLC v. Baxalta Inc., No. 2019-2418 (Fed. Cir. March 1, 2021)

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Michelle Ciotola and Ali Caless co-authored the article, "Trademark enforcement outside the courtroom: four underrated tools your clients may be overlooking," published by The Trademark Lawyer Magazine, Issue 4 2021. In the article, they explain how the United States Customs and Border Protection, trademark watch services, online infringement and modern trademark clearance can be utilized to amplify the strength of a brand and protect against infringement.

The U.S. judicial system acknowledges that patent infringement is bad — and willful patent infringement is even worse. So much so that a finding of willful infringement allows a court to increase damages up to three times the amount assessed by the jury. This article reviews a case in which a patentee discovered that willfulness isn’t easy to prove.
Bayer Healthcare LLC v. Baxalta Inc., No. 2019-2418 (Fed. Cir. March 1, 2021).

The Internet continues to generate new twists and issues in copyright law, forcing courts to apply traditional legal concepts to technologies not contemplated when the Copyright Act was enacted. In one recent case, the U.S. Court of Appeals for the Eleventh Circuit considered whether the publication of material on a blog or “really simple syndication” (RSS) feed granted an implied license to use the material. This article reviews why the court found that the plaintiff’s conduct didn’t constitute consent to an implied license. A brief sidebar summarizes why the court refused to reverse the jury’s rejection of the defendant’s fair use defense.
MidlevelU, Inc. v. ACI Information Group, No. 20-10856 (11th Cir. March 3, 2021); Latimer v. Roaring Toyz, Inc. (2010).

A product’s trade dress — the design and shape of the product or its packaging — isn’t subject to trademark protection if it is deemed functional. The word “functional” may conjure visions of parts and components, but courts can find a product’s color functional, too. This short article reviews a case involving dental products that involved just this question.
Sulzer Mixpac AG v. A&N Trading Co., No. 19-2951 (2d Cir. Feb. 18, 2021)

After more than a decade of litigation, the U.S. Supreme Court has resolved a dispute between tech giants in a way that has software developers breathing a sigh of relief. The Court held that the copyright doctrine of fair use permits developers to continue to build off of the work of others in many cases without fear of infringement liability — which, in this case, could have meant billions of dollars in damages. This article summarizes the Court’s broad reading of fair use in the application programming interface context.
Google LLC v. Oracle America, Inc., No. 18-956 (U.S. April 5, 2021).

Oh, the places you won’t go - Fair use defense fails for mashup 
Dr. Seuss Enterprises, L.P. v. ComicMix LLC, No. 19-55348 (9th Cir. Dec. 18, 2020).

Take two - Court revives trademark infringement claim
Car-Freshner Corp. v. American Covers, LLC, No. 19-2750 (2d Cir. Nov. 19, 2020).

Federal Circuit diverges from PTAB on analogous art ruling
Donner Technology, LLC v. Pro Stage Gear, LLC, No. 20-1104 (Fed. Cir. Nov. 9, 2020).

Language matters: Grammar guides court’s patent interpretation
SIMO Holdings Inc. v. Hong Kong uCloudlink Network Technology Ltd., No. 2019-2411 (Fed. Cir. Jan. 5, 2021).

Grammar nerds can delight in a new ruling from the U.S. Court of Appeals for the Federal Circuit, which hears all appeals involving patent litigation. Asked to interpret the meaning of the phrase “a plurality of” when it precedes a list of components in a patent, the court relied in part on a source likely to be found on the bookshelf of every English major at some point. This short article covers the court’s finding of noninfringement based on the meaning of the phrase “a plurality of.”
SIMO Holdings Inc. v. Hong Kong uCloudlink Network Technology Ltd., No. 2019-2411 (Fed. Cir. Jan. 5, 2021).

The fair use defense to copyright infringement traces its roots back to an 1841 case involving the use of George Washington’s writings for a biography. To say things have become more complicated is an understatement, as demonstrated by a recent fair use case that considered a “mashup” combining elements of Dr. Seuss with elements of the TV show “Star Trek.” This article reviews the case and the fair use defense, while a short sidebar reveals why the plaintiff lost its trademark claim.
Dr. Seuss Enterprises, L.P. v. ComicMix LLC, No. 19-55348 (9th Cir. Dec. 18, 2020).

Using the exact words of a competitor’s trademark in a mark would pretty clearly constitute infringement, but a trial court evaluating such a situation disagreed. However, on review of what it described as a “somewhat unusual” trademark case, the U.S. Court of Appeals for the Second Circuit didn’t concur, based on several factors. This article reviews the court’s discussion of the likelihood of confusion test as it applied to the facts.
Car-Freshner Corp. v. American Covers, LLC, No. 19-2750 (2d Cir. Nov. 19, 2020).

As patent owners are well aware, sometimes overcoming invalidating prior art can be difficult. Prior art — which makes an invention known and/or obvious, and therefore unpatentable — includes existing patents that are “analogous art.” But what makes an existing patent analogous? This article reviews a case from the U.S. Court of Appeals for the Federal Circuit, which handles all patent-related appeals, that explains the concept of analogous art.
Donner Technology, LLC v. Pro Stage Gear, LLC, No. 20-1104 (Fed. Cir. Nov. 9, 2020).

Partner and trademark and copyright attorney Michelle Ciotola, co-authored the article, the Seven Deadly Sins of IP, with Tina Dorr.

Confusion reigns
Ninth Circuit addresses counterfeiting claims
Arcona, Inc. v. Farmacy Beauty, LLC, No. 19-55586 (9th Cir. Oct. 1, 2020)

Any way you slice it
Copyright Act requires domestic infringement
IMAPizza, LLC v. At Pizza Ltd., No. 18-7168 (D.C. Cir. July 17, 2020)

USPTO responds to Booking.com ruling with revised guidelines

Objectively reasonable belief doesn’t preclude induced infringement liability
TecSec, Inc. v. Adobe Inc. Nos. 19-2192, 2258 (Fed. Cir. Oct. 23, 2020)

Behind the curtain
“Jersey Boys” doesn’t violate copyright on autobiography
Corbello v. Valli, No. 17-1637 (9th Cir. Sept. 8, 2020).

“Method of preparation” involving natural phenomenon is patent-eligible
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
Packet Intelligence LLC v. Netscout Systems, Inc., No. 19-2041 (Fed. Cir. July 14, 2020).

Who can file for trademark cancellation?
Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, No. 19-1567 (Fed. Cir. July 27, 2020).

The Cantor Colburn February / March 2022 IP Newsletter features these articles: 

If no one sees an unauthorized online copy of a photo, has it truly been “publicly displayed” as required for a copyright infringement lawsuit? A review of Bell v. Wilmott Storage Svcs.

Failure to mark reduces patentee’s infringement recovery. A review of Lubby Holdings LLC v. Chung.

NDA language doesn’t protect trade secrets indefinitely. A review of BladeRoom Group Ltd. v. Emerson Electric Co.

Last year, the Supreme Court found that the Patent Trial and Appeal Board’s administrative patent judges could constitutionally perform their duties only if they were appointed by the president and confirmed by the Senate. This case summarizes the Federal Circuit’s finding in Piano Factory Group, Inc. v. Schiedmayer Celesta GMBH on whether this reasoning applies to the Trademark Trial and Appeal Board’s administrative trademark judges.

Todd Garabedian's article, "Determining joint inventorship: antibody paying attention?" was published in The Patent Lawyer Magazine Annual 2021 issue. Their article discusses the tenets of joint inventorship under U.S. law with specific reference to the Dana-Farber decision.

SCOTUS has no reservations about Booking.com trademark
USPTO v. Booking.com, No. 19-46, June 30, 2020, U.S.

There’s no “I” in team
Court adds co-inventors to patents
Dana-Farber Cancer Institute v. Ono Pharm. Co., Ltd., No. 19-2050, July 14, 2020, Fed. Cir.

Cosmetic differences
Mourabit v. Klein, No. 19-2142, June 8, 2020, 2d Cir.

Court affirms PTAB’s common sense obviousness analysis
B/E Aerospace, Inc. v. C&D Zodiac, Inc., No. 19-1935, June 26, 2020, Fed. Cir.; KSR Int’l Co. v. Teleflex Inc., No. 04–1350, Supreme Court (2007).

The U.S. Supreme Court recently sided with digital travel company Booking.com in a much-anticipated trademark ruling. The Court’s holding, which makes the combination of a generic word with “.com” eligible for federal trademark registration, reportedly has already led to a wave of registration applications for such terms. This article reviews the Court’s reasoning and a short sidebar discusses its discussion regarding relevant evidence such as dictionaries, usage by consumers and competitors, and consumer surveys.
USPTO v. Booking.com, No. 19-46, June 30, 2020, U.S.

Common sense can go a long way. And patent litigants shouldn’t be surprised at just how far it can go when a court determines whether a patent is invalid for being obvious. This article discusses a case in which the court found that, while common sense shouldn’t be used as a wholesale substitute for reasoned analysis and evidentiary support, the Patent Trial and Appeal Board’s use of common sense was accompanied by the necessary analysis and support.
B/E Aerospace, Inc. v. C&D Zodiac, Inc., No. 19-1935, June 26, 2020, Fed. Cir.; KSR Int’l Co. v. Teleflex Inc., No. 04–1350, Supreme Court (2007).

Some types of inventions are the result of extensive collaboration, but not every collaborator qualifies as an inventor for patent purposes. The exclusion or inclusion of individuals as inventors can have significant implications, financially and otherwise. This article highlights a recent case involving a cancer treatment reviewing the concept of joint inventorship.
Dana-Farber Cancer Institute v. Ono Pharm. Co., Ltd., No. 19-2050, July 14, 2020, Fed. Cir.

To qualify for copyright protection, works must be “fixed in a tangible medium of expression.” Does human skin count as a tangible medium of expression? The U.S. Court of Appeals for the Second Circuit considered that question in a recent case — but in the end held off on a decision. This article reviews the court’s decision to find a different basis for ruling against the plaintiff.
Mourabit v. Klein, No. 19-2142, June 8, 2020, 2d Cir.

Federal Circuit cuts the line on patent-ineligible fishing method
In re: Rudy, No. 2019-2301, April 24, 2020, Fed. Cir.

The limits of artificial intelligence - PTO restricts “inventorship” to natural persons
In re Application of Application No.: 16/524,350, No. 50567-3-01-US, April 27, 2020, U.S.P.T.O. 

Supreme Court: Sovereign immunity sinks copyright claims
Allen v. Cooper, No. 18-877, March 23, 2020, U.S.

When copyrights are infringed by a state, copyright owners are likely out of luck. That’s the result of a unanimous decision from the U.S. Supreme Court striking down a federal law that allowed copyright owners to sue states in federal court for infringement. This brief article reviews the case and its implications.

Allen v. Cooper, No. 18-877, March 23, 2020, U.S.

Stairway to litigation Led Zeppelin prevails in copyright case 

Skidmore v. Led Zeppelin, Nos. 16-56057, -56287, March 9, 2020, 9th Cir.  

Patentee misses the mark on pre-lawsuit infringement damages

Arctic Cat Inc. v. Bombardier Recreational Products Inc., No. 2019-1080, Feb. 19, 2020, Fed. Cir.  

Trademark licensee denied preliminary injunction Court finds license isn’t “perpetual” Mrs. Fields Franchising LLC v. MFGPC, Nos. 19-4046, -4063, Nov. 7, 2019, Fed. Cir.  

Use it or lose it: Protecting IP during a public health crisis 

Look before you leap

Foreign publication leads to patent invalidation

Telefonaktiebolaget LM Ericsson v. TCL Corp.

Even after a patent is granted, an owner can find the patent’s validity challenged if it hasn’t thoroughly searched for “prior art.” 

Prescription for copyright protection: Register stat!

Southern Credentialing Support Svcs., LLC v. Hammond Surgical Hosp., LLC

Copyright protection generally takes effect as soon as an original work is created, but it might not be as extensive as some think. 

Attorneys’ fees awards in trademark cases

Appellate court lowers the bar

LHO Chicago River, LLC v. Perillo

When most people think about what it takes to qualify as “exceptional,” they probably imagine a fairly high bar.

Supreme Court slaps down PTO pursuit of attorneys’ fees

Peter v. NantKwest, Inc.

The U.S. Supreme Court has weighed in on a new U.S. Patent and Trademark Office practice when patent applicants appeal adverse decisions in district court.

Food for thought: Court rules banana costume is copyrightable
Silvertop Associates Inc. v. Kangaroo Mfg. Inc., No. 18-2266, Aug. 1, 2019, 3d Cir., Star Athletica, L.L.C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017).

Back to the future
Federal Circuit rejects narrow approach to relation back doctrine
Anza Technology, Inc. v. Mushkin, Inc., No. 19-1045, Aug. 16, 2019, Fed. Cir.

No harm, no foul
Fair use defense wins trademark infringement case
SportFuel, Inc., v. PepsiCo, Inc., No. 18-3010, Aug. 2, 2019, 7th Cir. 

Timing matters in inter partes review
Henny Penny Corp. v. Frymaster LLC, No. 18-1596, Sept. 12, 2019, Fed. Cir.

Auto parts’ aesthetic appeal doesn’t invalidate design patents
Automotive Body Parts Ass’n v. Ford Global Techs., LLC, No. 18-1613, July 11, 2019, Fed. Cir.

Actual consumer confusion irrelevant in trademark profits determination
4 Pillar Dynasty LLC v. New York & Co., Inc., No. 17-2398, July 5, 2019, 2d Cir.

Beyond words
Federal Circuit faults PTAB’s written description analysis
In re: Global IP Holdings LLC, No. 18-1426, July 5, 2019, Fed. Cir.

Third Circuit rejects copyright presumption in favor of permanent injunctions
TD Bank N.A. v. Hill, No. 16-2897, July 1, 2019, 3d Cir.; eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006)

Cantor Colburn Patent Agent Dennis Jakiela, Ph.D., co-authored an article in the Journal of Chemical Education in 2020, "Orchestrating a Highly Interactive Virtual Student Research Symposium," with Jessica G. Freeze,* Jessica A. Martin, Patrick Fitzgerald, Clorice R. Reinhardt, and Ana S. Newton. Dennis is an active volunteer leader with the New Haven Local Section of the American Chemical Society.

Sink or swim: Precise patent language scuttles infringement lawsuit

Cobalt Boats, LLC v. Brunswick Corp., No. 18-1376, May 31, 2019, Fed. Cir.

It’s official

Supreme Court says government isn’t a person ― for patent purposes

Return Mail, Inc. v. U.S. Postal Service, No. 17-1594, June 10, 2019, U.S.

Limited protection

Inaccurate statement forfeits copyright infringement claim

Gold Value Int’l Textile, Inc. v. Sanctuary Clothing, LLC, No. 17-55818, June 4, 2019, 9th Cir.

SCOTUS strikes down ban on immoral or scandalous trademark registration

Iancu v. Brunetti, No. 18-302, June 24, 2019, U.S.

Active or passive?

What makes website operators directly liable for copyright infringement

VHT, Inc. v. Zillow Group, Inc., No. 17-35587, March 15, 2019, Ninth Cir.

Vehicle charging station patents short-circuit under Alice analysis

ChargePoint, Inc. v. SemaConnect, Inc., No. 18-1739, March 28, 2019, Fed. Cir.

Supreme Court ruling leaves a mark

Trademark right survives licensor’s bankruptcy

Mission Product Holdings, Inc. v. Tempnology, LLC, No. 17-1657, May 20, 2019, U.S.

PTAB rejects inherently obvious finding

PersonalWeb Technologies, LLC v. Apple, Inc., No. 18-1599, March 8, 2019, Fed. Cir.

Testing truths

Experimental use preempts public use, on-sale bars to patentability

Barry v. Medtronic, Inc., No. 17-2463, Jan. 24, 2019, Fed. Cir.

Extra! Extra!

SCOTUS clarifies copyright infringement lawsuit prerequisite

Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, No. 17-571, Jan. 8, 2019, U.S.S.C.

Obviousness doesn’t require motivation to combine prior art

Realtime Data, LLC v. Iancu, No. 18-1154, Jan. 10, 2019, Fed. Cir.

Court of Appeals revives denied trademark application

In re: Guild Mortgage Co., No. 17-2620, Jan. 14, 2019, Fed. Cir.

When a surname can be registered as a trademark
Schlafly v. St. Louis Brewery, LLC, No. 17-1468, Nov. 26, 2018, Fed. Cir.

Lens manufacturer loses the blame game
Circumstantial evidence seals induced patent infringement liability
Enplas Display Device Corp. v. Seoul Semiconductor Co., Ltd., No. 16-2599, Nov. 19, 2018, Fed. Cir.

Music platform hits a sour note
Resale of digital music violates Copyright Act
Capitol Records, LLC v. ReDigi Inc., No. 16-2321, Dec. 18, 2018, 2d Cir.

Confidential sales can trigger the on-sale bar to patentability
Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., No. 17-1229, Jan. 22, 2019, U.S. Sup. Ct. 

Print still matters

Trade show catalog bars patent

Nobel Biocare Svcs. AG v. Instradent USA, Inc., No. 17-2256, Sept. 13, 2018, Fed. Cir.

SAS Institute, Inc. v. Iancu, No. 16–969, April 24, 2018, S.Ct.

Stairway back to court

Erroneous jury instructions trip up copyright verdict

Skidmore v. Led Zeppelin, No. 16-56057, Sept. 28, 2018, 9th Cir.

How ranges described in prior art trigger obviousness presumption

E.I. DuPont de Nemours & Co. v. Synvina C.V., No. 17-1977, Sept. 17, 2018, Fed. Cir.

Can you sue foreign corporations for trademark infringement?

Plixer Int’l, Inc. v. Scrutinizer GmbH, No. 18-1195, Sept. 13, 2018, 1st Cir.

Read all about it!

Printed publication bars patents on drug tracking system

Jazz Pharmaceuticals, Inc. v. Amneal Pharmaceuticals, LLC, No. 17-1671, July 13, 2018, Fed. Cir.

Factual compilation qualifies for “thin” copyright

Experian Information Solutions, Inc. v. Nationwide Marketing Services, Inc., No. 16-16987, June 27, 2018, 9th Cir.

What’s fair in copyright and trademark …

Alleged infringement of technical standards raises questions

American Society for Testing and Materials v. Public.Resource.Org, Inc., No. 17-7035, July 17, 2018, D.C. Cir.

Court blocks trademark for sports shop

In re Detroit Athletic Co., No. 17-2361, Sept. 20, 2018, Fed. Cir.

Federal Circuit revives soda trademark battle over “ZERO”
Royal Crown Co., Inc. v. The Coca-Cola Co., No. 16-2375, June 20, 2018, Fed. Cir.

Supreme Court allows patent owner to recover lost foreign profits
WesternGeco LLC v. ION Geophysical Corp., No. 16-1011, June 22, 2018, U.S.

Shot down
Photogs lose DMCA case over metadata removal
Stevens v. CoreLogic, Inc., No. 16-56089, June 20, 2018, 9th Cir.

Phonetic alphabet fails patent-eligibility test
In re Wang, No. 17-1827, June 20, 2018, Fed. Cir.

Supreme Court patent update

Inter partes review survives constitutional challenge

Oil States Energy Services, LLC v. Greene’s Energy Group, No. 16-712, April 24, 2018, U.S.

SAS Institute, Inc. v. Iancu, No. 16-969, April 24, 2018, U.S.

 D.C. Circuit tunes in to streaming content copyright issues

Spanski Enterprises, Inc. v. Telewizja Polska, S.A., No. 17-7051, March 2, 2018, D.C. Cir.

All tied up

Court splits over trade dress, trademark claims

adidas America, Inc. v. Skechers USA, Inc., No. 16-35204, May 10, 2018, 9th Cir.

 Why the Federal Circuit voted against a ballot verification patent

Voter Verified, Inc. v. Election Systems & Software LLC, No. 2017-1930, April 20, 2018, Fed. Cir.

Can licenses limit competitors’ use?
Copyright ruling hits third-party software support providers
Oracle USA, Inc. v Rimini Street, Inc., No. 16-16832, -16905, Jan. 8, 2018, 9th Cir.

Breaking news
Selling access to clips of copyrighted programming isn’t fair use
Fox News Network, LLC v. TVEyes, Inc., No. 15-3885, Feb. 27, 2018, 2d Cir.

How the on-sale bar can threaten a patent
The Medicines Co. v. Hospira, Inc., No. 14-1469, Feb. 6, 2018, Fed. Cir.

Giving trade dress infringement claim a shot
Leapers, Inc. v. SMTS, LLC, No. 17-1007, Jan. 10, 2018, 6th Cir.

Case closed
Federal Circuit confirms expansion of liability for divided patent infringement
Travel Sentry, Inc. v. Tropp, No. 16-2386, Dec. 19, 2017, Fed. Cir.
Akamai Technologies, Inc. v. Limelight Networks, Inc. (Akamai V), Nos. 2009-1372, 2009-1380, 2009-1416, 2009-1417. Aug. 13, 2015, Fed. Cir.

Will innocent, immaterial inaccuracies defeat copyright registration?
Roberts, II v. Gordy, No. 16-12284, Dec. 15, 2017, 11th Cir.

What makes a patent invalid due to “indefiniteness?"

The role of functional language in patent applications
BASF Corp. v. Johnson Matthey Inc., No. 16-1770, Nov. 20, 2017, Fed. Cir.
Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, June 2, 2014, S.Ct.

Bar fight

Court knocks down prohibition against immoral or scandalous marks
In re Brunetti, No. 15-1109, Dec. 13, 2017, Fed. Cir.
Matal v. Tam, No. 15-1293, June 19, 2017 (U.S.)

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Train in vain
Patents for mass transit fare systems struck down
Smart Systems Innovations, LLC v. Chicago Transit Authority, No. 16-1233, Oct. 18, 2017, Fed. Cir.; Alice Corp. v. CLS Bank Int’l, 573 U.S. __, 134 S.Ct. 2347 (2014).

Who owns the copyright of stock photos?
DRK Photo v. McGraw-Hill Global Education Holdings, LLC, No. 15-15106, Sept. 12, 2017, 9th Cir.

Proving infringement of system patents
Court rejects jury’s infringement finding in phone case
Intellectual Ventures LLC v. Motorola Mobility LLC, No. 16-1795, Sept. 13, 2017, Fed. Cir.

Federal Circuit clarifies surname test for trademarks
Earnhardt v. Kerry Earnhardt, Inc., No. 16-1939, July 27, 2017, Fed. Cir.

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Whose home is it?
House designs avoid copyright infringement
Design Basics, LLC v. Lexington Homes, Inc., No. 16-3817, June 6, 2017, 7th Cir.

Beat it
Heart disease diagnostic method isn’t patent-eligible
The Cleveland Clinic Foundation v. True Health Diagnostics LLC, No. 16-1766, June 16, 2017, Fed. Cir.

Why facts matter when using the fair use defense in trademark cases
Marketquest Group, Inc. v. BIC Corp., No. 15-55755, July 7, 2017, 9th Cir.

Failure to prove obviousness revives patent application
In re Stepan Co., No. 16-1811, Aug. 25, 2017, Fed. Cir.

Supreme Court disparages ban on offensive trademarks

Matal v. Tam, No. 15-1293, June 19, 2017 (U.S.)

Exhausted yet?
SCOTUS clarifies doctrine limiting patent rights
Impression Products, Inc. v. Lexmark Int’l, Inc., No. 15-1189, May 30, 2017 (U.S.)

A road map for patent obviousness
Millennium Pharmaceuticals, Inc. v. Sandoz Inc., No. 2015-2066, July 17, 2017 (Fed. Cir.)

Defining “seller” for copyright infringement liability
Milo & Gabby LLC v. Amazon.com, Inc., No. 2016-1290, May 23, 2017 (U.S.)

Manufacturer vs. distributor - Who owns that unregistered trademark?
Covertech Fabricating, Inc. v. TVM Building Products, Inc., No. 15-3893, April 18, 2017 (3d Cir.)

A uniform standard for copyright for industrial designs
Star Athletica, LLC v. Varsity Brands, Inc., No. 15-866, March 22, 2017 (U.S.)

Supreme Court limits venue for patent lawsuits
TC Heartland LLC v. Kraft Foods Group Brand LLC, No. 16-341, May 22, 2017 (U.S.)

Coding error: Court rejects software patent
RecogniCorp, LLC v. Nintendo Co., Ltd., No. 16-1499, April 28, 2017 (Fed. Cir.)

SCOTUS: Timing is everything in patent infringement cases
SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 15-927, March 21, 2017 (U.S.)
Petrella v. Metro-Goldwyn-Mayer, Inc., No. 12–1315, May 19, 2014 (U.S.)

Access denied - Court shuts down copyright infringement claims
Perfect 10, Inc. v. Giganews, Inc., No. 15-55500, -55523, -56026, Jan. 23, 2017 (9th Cir.)

How much is enough? - Supreme Court clarifies overseas patent infringement liability
Life Technologies Corp. v. Promega Corp., No. 14-1538, Feb. 22, 2017 (U.S.)

Why a kit bag doesn’t qualify for trade dress protection
Arlington Specialties, Inc. v. Urban Aid, Inc., No. 14-3416, Jan. 27, 2017 (7th Cir.)

Just desserts?
Why a computerized menu patent was found ineligible
Apple, Inc. v. Ameranth, Inc., No. 2015-1703, -1704, Nov. 29, 2016 (Fed. Cir.)
Alice Corp Pty. Ltd. v. CLS Bank Int’l, No. 13–298, June 19, 2014 (U.S.)

Business method patent surprisingly survives judicial scrutiny
Trading Technologies Int’l, Inc. v. CQG, Inc., No. 2016-1616, Jan. 18, 2017 (Fed. Cir.)

Application accepted
Court says marks can cover certain software
In re JobDiva, Inc., No. 2015-1960, Dec. 12, 2016 (Fed. Cir.)

Why novelty doesn’t make abstract ideas any less abstract
Synopsys, Inc. v. Mentor Graphics Corp., No. 2016-1599, Oct. 17, 2016 (Fed. Cir.)

Can’t you hear me? Court turns deaf ear to wireless radio patent-holder
Affinity Labs of Texas, LLC v. DIRECTV LLC, No. 2015-1845, -1846, -1847, -1848, Sept. 23, 2016 (Fed. Cir.)
Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10-1150, March 20, 2012 (U.S.)
Alice Corp Pty. Ltd. v. CLS Bank Int’l, No. 13-298, June 19, 2014 (U.S.)
Affinity Labs of Texas, LLC v. Amazon.com Inc., No. 2015-2080, Sept. 23, 2016 (Fed. Cir.)

How the disavowal exception trashed a patent infringement claim
Poly-America, L.P. v. API Industries, Inc., No. 16-1200, Oct. 14, 2016 (Fed Cir.)

Fair use doctrine - Comedy routine fails to get laughs from plaintiff — or court
TCA Television Corp v. McCollum, No. 16-134, Oct. 11, 2016 (2d Cir.)

Court shoots down trademark infringement defendant
FN Herstal SA v. Clyde Armory Inc., No. 15-14040, Sept. 27, 2016 (11th Cir.)

The Halo effect
Appeals court upholds enhanced damages for willful infringement
Halo Electronics, Inc. v. Pulse Electronics, Inc. No. 14-1513, June 13, 2016 (U.S.)
WBIP, LLC v. Kohler Co., No. 15-1038, -1044, July 19, 2016 (Fed. Cir.)

Third parties allowed to assert work-for-hire defense
Urbont v. Sony Music Entertainment, No. 15-1778, July 29, 2016 (2nd Cir.)

When is automation of a manual process patentable?
McRO, Inc. v. Bandai Namco Games America Inc., No. 2015-1080, Sept. 13, 2016 (Fed. Cir.)

The naked truth
Valid assignments and agreements determine trademark rights
Russell Road Food and Beverage, LLC v. Spencer, No. 14-16096, July 22, 2016 (9th Cir.)

When is a sale not a sale?
Federal Circuit narrows on-sale bar to patents
The Medicines Co. v. Hospira, Inc., No. 2014-1469, -1504, July 11, 2016 (Fed. Cir.)

Music to Internet service providers’ ears
Appellate court extends DMCA safe harbor
Capitol Records, LLC v. Vimeo, LLC, No. 14-1048, June 16, 2016 (2d Cir.)

Intent to infringe
Verdict goes against medical device maker
Warsaw Orthopedic, Inc. v. NuVasive, Inc., No. 2013-1576, -1577, June 3, 2016 (Fed. Cir.)
Commil USA, LLC v. Cisco Sys., Inc., No. 13-896, 2015 (U.S.)

Single factor preempts likelihood of trademark confusion claim
Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, No. 2016-1103, June 24, 2016 (Fed. Cir.)

Read the October/November 2016 Newsletter in full

Supreme Court throws Seagate test overboard
Ruling loosens standard for enhanced patent infringement damages
Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 14-1513, June 13, 2016 (U.S.)
Stryker Corporation v. Zimmer, Inc., No. 14-1513, June 13, 2016 (U.S.)
Octane Fitness, LLC v. ICON Health & Fitness, Inc., No. 12-1184, April 29, 2014 (U.S.)
In re Seagate Technology, LLC, 497 F. 3d 1360, Aug. 20, 2007 (Fed. Cir.)

Scope of design determines whether patent infringement challenge stays afloat
Sport Dimension, Inc. v. The Coleman Co. Inc., No. 2015-1553, April 19, 2016 (Fed. Cir.)

Law of nature: Some genetic diagnostic methods are patent-ineligible
Genetic Technologies Ltd. v. Merial L.L.C., Nos. 2015-1202, 2015-1203, April 8, 2016 (Fed. Cir.)
Ariosa v. Sequenom, Nos. 2014-1139, 2014-1144, June 12, 2015 (Fed. Cir.)
Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10–1150, March 20, 2012 (U.S.)

Read the August September 2016 IP Newsletter in full

Playing with fire
Inequitable conduct results in outsized antitrust award
TransWeb, LLC v. 3M Innovative Properties Co., No. 14-1646, Feb. 10, 2016 (Fed. Cir.)

How to outhustle a hustler
Court modifies the terms of a permanent injunction
LFP IP, LLC v. Hustler Cincinnati, Inc., No. 15-3135, Jan. 13, 2016 (6th Cir.)

Copyright law defeats right-of-publicity claims
Dryer v. The National Football League, No. 14-3428, Feb. 26, 2016 (8th Cir.)

At the Federal Circuit
Some patentees might receive preissuance damages
Rosebud LMS Inc. v. Adobe Systems Inc. 2015-1428, Feb. 9, 2016 (Fed. Cir.)

Game changer
Federal Circuit rejects ban on disparaging trademarks
In re Tam, No. 14-1203, Dec. 28, 2015 (Fed. Cir.)

Stop, thief!
Court lowers bar for injunctions against infringers
Apple Inc. v. Samsung Electronics Co., Ltd., Dec. 16, 2015, Nos. 2015-1171, 2015-1195, 2015-1994 (Fed. Cir.)

Price disparity does not preempt lost profits damages
Akamai Technologies, Inc. v. Limelight Networks, Inc., Nov. 16, 2015, Nos. 09-1372, 09-1380, 09-1416, 09-1417 (Fed. Cir.)

Computerized lending method found patent-ineligible, again
Mortgage Grader, Inc. v. First Choice Loan Services, Inc., Nov. 4, 2015, No. 15-1415 (Fed. Cir.)

With President Obama’s anticipated signature, The Defend Trade Secret Act provides the first federal cause of action for trade secret misappropriation. Cantor Colburn attorneys present this white paper to explain further.

Defendant damaged: A patent infringement case
Nordock, Inc. v. Systems Inc., No. 14-1762, Sept. 29, 2015 (Fed. Cir.)

Whom are you confusing?
Clear labeling precludes trademark infringement claim
Multi Time Machine, Inc. v. Amazon.com, Inc., No. 13-55575, Oct. 21, 2015 (9th Cir.)
AMF Inc. v. Sleekcraft Boats, No. 76-1744, June 28, 1979 (9th Cir.)

Thanks for the memory
Clarifying the patent description requirement
Inphi Corp. v. Netlist, Inc., No. 2015-1179, Nov. 13, 2015 (Fed. Cir.)
Santarus, Inc. v. Par Pharm., Inc., No. 10-1360, Sept. 4, 2012 (Fed. Cir.)

Court finds yoga-related copyright claim to be a stretch
Bikram’s Yoga College of India, L.P. v. Evolation Yoga, LLC, No. 13-55763, Oct. 8, 2015 (9th Cir.)

Playing the ratings game
Ninth Circuit provides RAND rate guidance
Microsoft Corp. v. Motorola Inc. No. 14-35393, July 30, 2015 (9th Cir.)

Back in the limelight
Federal Circuit expands liability for patent infringement
Akamai Technologies, Inc. v. Limelight Networks, Inc., Nos. 2009-1372, 2009-1380, 2009-1416, 2009-1417, Aug. 13, 2015 (Fed. Cir.)
Muniauction, Inc. v. Thomson Corp., No. 2007-1485, July 14, 2008 (Fed. Cir.)

Peace and love? Not when it comes to trademarks
Juice Generation, Inc. v. GS Enterprises, LLC, No. 2014-1853, July 20, 2015 (Fed. Cir.)

Consider fair use before issuing a takedown notice
Lenz v. Universal Music Group, Nos. 13-16106, 13-16107, Sept. 14, 2015 (9th Cir.)

Can online search results trigger trademark liability?
Multi Time Machine, Inc. v. Amazon.com, Inc., No. 13-55575, July 6, 2015 (9th Cir.)
AMF Inc. v. Sleekcraft Boats, No. 76-1744, June 28, 1979 (9th Cir.)

Drawing the line
Court bars further claims against exonerated manufacturer
SpeedTrack Inc. v. Office Depot, Inc., No. 2014-1475, June 30, 2015 (Fed. Cir.)
Kessler v. Eldred, No. 196, May 13, 1907 (Supreme Court)

Alice rocks the boat once again
Price optimization method isn’t patent-eligible
OIP Technologies, Inc. v. Amazon.com, Inc., No. 2012-1696, June 11, 2015 (Fed. Cir.)
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, No. 13-298, June 19, 2014 (Supreme Court)

Time out! Trademark fails for lack of intent to use
M.Z. Berger & Co., Inc. v. Swatch AG, No. 2014-1219, June 4, 2015 (Fed. Cir.)

Despite the US Court of Appeals for the Federal Circuit's ruling in Amgen v Sandoz, significant uncertainty concerning two key provisions of the BCPIA remains, as Pharmaceutical Practice Group Co-Chairs Steve Coyle and Leslie-Anne Maxwell describe in their article, "Amgen v Sandoz: The Biosimilars Saga Continues" published in Life Sciences IP Review, Autumn 2015 issue.

Caught in a web - Supreme Court addresses royalties and patent expiration
Kimble v. Marvel Enterprises, Inc., No. 13-720, June 22, 2015 (Supreme Court)
Brulotte v. Thys Co., No. 20, November 16, 1964 (Supreme Court) 

Supreme Court disconnects patent infringement defense
Commil USA, LLC v. Cisco Systems, Inc., No. 13-896, May 26, 2015 (Supreme Court)

Laying a low floor for copyright originality
Home Legend, LLC v. Mannington Mills, Inc., No 14-13440, April 29, 2015 (11th Cir.)

Is that trademark too concise?
In Re: TriVita, Inc., No. 2014-1383, April 17, 2015 (Fed. Cir.)

Running on empty
Decision highlights patent drafting danger
Pacing Technologies, LLC v. Garmin Technologies, Inc., No. 2014-1396, Feb. 18, 2015 (Fed. Cir.)

Registration requires actual provision of services
Couture v. Playdom, Inc., No. 2014-1480, March 2, 2015 (Fed. Cir.)
Aycock Engineering, Inc. v. Airflite, Inc., No. 2008-1154, March 30, 2009 (Fed. Cir.)

Ain’t that a shame: A musical copyright case
Corbello v. DeVito, No. 12-16733, Feb. 10, 2015 (9th Cir.)

Federal Circuit puts patent exhaustion doctrine on hold
Helferich Patent Licensing, LLC v. The New York Times Co., No. 2014-1196, Feb. 10, 2015 (Fed. Cir.)

Click here for eligibility
Recent ruling offers encouragement to patent holders
DDR Holdings LLC v. Hotels.com, No. 2013-1505, Dec. 5, 2014 (Fed. Cir.)
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, No. 13-298, June 19, 2014 (Supreme Court)

Something more: Trademark confusion standard clarified
In re St. Helena Hospital, No. 2014-1009, Dec. 16, 2014 (Fed. Cir.)

On second thought
Ninth Circuit reverses course on the first sale doctrine
Omega S.A. v. Costco Wholesale Corp., No. 11-57137, Jan. 20, 2015 (9th Cir.)
Kirtsaeng v. John Wiley & Sons, Inc., No. 11-697, March 19, 2013 (Supreme Court)

Abiding by the “original patent” rule when reissuing
Antares Pharma, Inc. v. Medac Pharma Inc., No. 2014-1648, Nov. 17, 2014 (Fed. Cir.)

Steve Coyle, Leslie-Anne Maxwell, and Chad Dever wrote the article, "Ogres and Trolls," for Life Sciences IP Review magazine about inter-partes review and post-grant review and life sciences patents. 

Inequitable conduct crashes patent for car computer
American Calcar, Inc. v. American Honda Motor Co., Inc., No. 2013-1061, Sept. 26, 2014 (Fed. Cir.)

Means-plus-function to an unfortunate end
Robert Bosch, LLC v. Snap-On, Inc., No. 2014-1040, Oct. 14, 2014 (Fed. Cir.)

How long is too long?
SCA Hygiene Prods. AB v. First Quality Baby Prods., No. 2013-1564, Dec. 17, 2014 (Fed. Cir.)

Sunk costs: Attorneys’ fees in Lanham Act cases
Fair Wind Sailing, Inc. v. Dempster, Nos. 13-3305 & 14-1572, Sept. 4, 2014 (3rd Cir.)
Octane Fitness LLC v. Icon Health & Fitness Inc., No. 12-1184, April 29, 2014 (U.S. Supreme Court)

Thomas Mango and Curt Krechevsky wrote the article, "Trademark Oppositions in the United States of America" published in the IPO Law Journal and featured in its IPO Daily News.

Definitely not: Patent rejected for indefiniteness
Interval Licensing LLC v. AOL, Inc., Nos. 2013-1282, -1283, -1284, -1285, Sept. 10, 2014 (Fed. Cir.)
Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, June 2, 2014 (Supreme Court)

Deliberate deception in a false advertising case
Merck Eprova AG v. Gnosis S.p.A., Nos. 12‐4218‐cv(L), 13‐513‐cv(Con), July 29, 2014 (2nd Cir.)

Another one bites the dust
Federal Circuit rejects business method claim
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, No. 13-298, June 19, 2014 (Supreme Court)
buySAFE, Inc. v. Google, Inc., No. 2013-1575, Sept. 3, 2014 (Fed. Cir.)

What if …?
The very real case of a hypothetical license
Oracle Corp. v. SAP AG, No. 12-16944, Aug. 29, 2014 (9th Cir.)

Partner Christopher C. Boehm wrote the chapter "Emerging Trends in Intellectual Property Law Place Increasing Burdens on Innovators" in Aspatore Thought Leadership Intellectual Property Law 2015.  Associate Chad Dever provided key research and analysis.

Go ask Alice
Patentees have a new Supreme Court precedent to consider
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, No. 13-298, June 19, 2014 (Supreme Court)
Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10-1150, March 20, 2012 (Supreme Court)
Gottschalk v. Benson, No. 71-485, Nov. 20, 1972 (Supreme Court)
Parker v. Flook, No. 77-642, June 22, 1978 (Supreme Court)
Bilski v. Kappos, No. 08-964, June 28, 2010 (Supreme Court)
Diamond v. Diehr, No. 79-1112, March 3, 1981 (Supreme Court)

Developing story on the validity of digital-imaging patents
Digitech Image Technologies, LLC v. Electronics for Imaging, Inc., Nos. 2013-1600, -1601, -1602, -1603, -1604, -1605, -1606, -1607, -1608, -1609, -1610, -1611, -1612, -1613, -1614, -1615, -1616, -1617, -1618, July 11, 2014 (Fed. Cir.)
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, No. 13-298, June 19, 2014 (Supreme Court)

Juicy decision
FD&C Act doesn’t bar Lanham Act claims
POM Wonderful LLC v. Coca-Cola Co., No. 12-761, June 12, 2014 (Supreme Court)

Can an obscure online post constitute prior art?
Suffolk Technologies, LLC v. AOL, Inc., No. 2013-1392, May 27, 2014 (Fed. Cir.)

Blocked! Court finds doggy jerseys obvious
MRC Innovations, Inc. v. Hunter Mfg., No. 2013-1433, April 2, 2014 (Fed Cir.)

More false advertising claims on the way?
Plaintiff pool may widen following Supreme Court decision
Lexmark Int’l, Inc. v. Static Control Components, Inc., No. 12-873, March 25, 2014 (Supreme Court)
 
Raising the bar on the standard for patent definiteness
Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, June 2, 2014 (Supreme Court)

Step to it
Supreme Court tightens standard for induced patent infringement
Limelight Networks, Inc. v. Akamai Technologies, Inc., No. 12-786, June 2, 2014 (Supreme Court)
Muniauction, Inc. v. Thomson Corp., No. 2007-1485, July 14, 2008 (Fed. Cir.)

MJ scores again
Basketball legend taking a shot at grocery store’s ad campaign
Jordan v. Jewel Food Stores, Inc. and SuperValu Inc., No. 12-1992, Feb. 19, 2014 (7th Cir.)

Watch out, copyright holders!
Release of conference call transcript deemed not infringement
The Swatch Group Mgmt. Services Ltd. v. Bloomberg L.P., Nos. 12–2412–cv, 12–2645–cv, Jan. 27, 2014 (Fed. Cir.)

Expert testimony needed on patent indefiniteness claims
Elcommerce.com v. SAP AG, 2011-1369, Feb. 24, 2014 (Fed. Cir.)

Forewarned is forearmed? Doctrine of equivalents tested
Ring & Pinion Service Inc. v. ARB Corporation, No. 2013-1238, Feb. 19, 2014 (Fed. Cir.)

A new spin on preliminary injunctions
Trademark holders now face a tougher standard
Herb Reed Enterprises, LLC v. Florida Entertainment Mgmt., No. 12-16868, Dec. 2, 2013 (9th Cir.)
eBay Inc. v. MercExchange, L.L.C., No. 05-130, May 15, 2006 (U.S. Supreme Court)
Winter v. Natural Resources Defense Council, Inc., No. 07-1239, Nov. 12, 2008 (U.S. Supreme Court)

Inventive patent requires both hardware and software
Nazomi Communications, Inc. v. Nokia Corp, No. 2013-1165, Jan. 10, 2014 (Fed. Cir.)

Sins of omission
Inequitable conduct case turns on undisclosed information
The Ohio Willow Wood Co. v. Alps South, LLC, Nos. 2012-1642, 2013-1024, Nov. 15, 2013 (Fed. Cir.)

Dude, can you copyright a hookah?
Inhale, Inc. v. Starbuzz Tobacco, Inc., No. 12-56331, Jan. 9, 2014 (9th Cir.)

Patent obviousness analysis fails with Federal Circuit
High Point Design LLC v. Buyer’s Direct, Inc., No. 2012-1455, Sept. 11, 2013 (Fed. Cir.)

Learning a tough lesson on how to write patent descriptions
Novozymes A/S v. DuPont Nutrition Biosciences APS, No. 2012-1433, July 22, 2013 (Fed. Cir.)

Bam! Pow! Smash!
The demise of a comic book artist’s copyright
Marvel Characters, Inc. v. Kirby, No. 11-3333-cv, Aug. 8, 2013 (2nd Cir.)

The missing link?
Tenth Circuit weighs in on keyword advertising
1-800 Contacts, Inc. v. Lens.com, No. 11-4114, 11-4204, 12-4022, July 16, 2013 (10th Cir.)

Patent eligibility for software
Fractured Federal Circuit provides little clarity
CLS Bank Int’l v. Alice Corp. Pty. Ltd., 2011-1301, May 10, 2013 (Fed. Cir.)

Should royalties end when a patent expires?
Kimble v. Marvel Enterprises, Inc., No. 11-15605, July 16, 2013 (9th Cir.)
Brulotte v. Thys Co., No. 20, Nov. 16, 1964 (Supreme Court)

Oprah’s next chapter
Court allows trademark infringement case to continue
Kelly-Brown v. Winfrey, No. 12-1207-cv, May 31, 2013 (2nd Cir.)

Dodging patent infringement liability in good faith
Commil USA, LLC v. Cisco Systems, Inc., No. 2012-1042, June 25, 2013 (Fed. Cir.)

The final round
Supreme Court addresses patentability of genes
Association for Molecular Pathology v. Myriad Genetics Inc., No. 12-398, June 13, 2013 (U.S. Supreme Court)

Are wireless carriers liable for user infringement?
Luvdarts, LLC v. AT&T Mobility, No. 11-55497, March 25, 2013 (9th Cir.)

You reap what you sow
Patent exhaustion defense doesn’t stir Supreme Court
Bowman v. Monsanto Co., No. 11-796, May 13, 2013 (U.S. Supreme Court)

Case dismissed: “ibooks” mark isn’t protected
J.T. Colby & Co. Inc. v. Apple, Inc., 11 Civ. 4060 (DLC), May 8, 2013 (Southern Dist. of New York)

Book it

Supreme Court has final word on first-sale doctrine

Kirtsaeng v. John Wiley & Sons, No. 11-697, March 19, 2013 (U.S. Supreme Court)

Can silence stifle an infringement claim?

Radio Systems Corp. v. Lalor, No. 2012-1233, March 6, 2013 (Fed. Cir.)

Federal Circuit marks the spot

Multistep patents prove hard to defend

Move, Inc. v. Real Estate Alliance Ltd., No. 2012-1342, March 4, 2013 (Fed. Cir.)

Akamai Technologies Inc. v. Limelight Networks, Inc., No. 2010-1291, Aug. 31, 2012 (Fed. Cir.)

In the bag: “Willful blindness” defense denied

Fendi Adele, S.R.L. v. Ashley Reed Trading, Nos. 11-3025-cv (Lead), 11-3027-cv (Con), 11-3058-cv (XAP), Jan. 4, 2013 (2nd Cir.)

If the shoe doesn’t fit …
Supreme Court steps into trademark validity case
Already, LLC v. Nike, Inc., No. 11-982, Jan. 9, 2013 (U.S. Supreme Court)

Drilling down into the power of objective evidence
Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc., No. 2011-1555, Nov. 15, 2012 (Fed. Cir.)

Who gets the patent?
USPTO issues final rules on first-to-file system

Infringement standard for photographs comes into focus
Harney v. Sony Pictures Television, Inc., No. 11-1760, Jan. 7, 2013 (1st Cir.)

Apple falls too far from tree
Irreparable harm won’t stop Samsung sales
Apple Inc. v. Samsung Electronics Co, No. 2012-1507, Oct. 11, 2012 (Fed. Cir.)

Federal Circuit raises the bar for inequitable conduct defense
Therasense, Inc. v. Becton, Dickinson and Co., Nos. 2008-1511, 2008-1512, 2008-1513, 2008-1514, 2008-1595, May 25, 2011 (Fed. Cir.)
1st Media, LLC v. Electronic Arts, Inc., No. 2010-1435, Sept. 13, 2012 (Fed. Cir.)

Location is everything … or is it?
Trademark case looks at relevance of geographic connection
In re Miracle Tuesday LLC, No. 2011-1373, Oct. 4, 2012 (Fed. Cir.)

Progressive encroachment vs. a tardy claim
Oriental Financial Group, Inc. v. Cooperativa De Ahorro y Crédito Oriental, Nos. 11-1473, 11-1476, Oct. 18, 2012 (1st Cir.)

The America Invents Act
Key components of the patent reform law
A sidebar explains why patent ownership could get more expensive.

Transaction denied
Federal Circuit addresses software patentability
CyberSource Corporation v. Retail Decisions, Inc., No. 2009-1358, Aug. 16, 2011 (Fed. Cir.)
Bilski v. Kappos, No. 08-964, June 28, 2010 (Supreme Court)

Court shelves first-sale doctrine for foreign-made works
John Wiley & Sons, Inc. v. Kirtsaeng, No. 09-4896, Aug. 15, 2011 (2nd Cir.)
Omega S.A. v. Costco Wholesale, Nos. 07-55368, 07-56206, Sept. 3, 2008 (9th Cir.)

Using survey results in false advertising claims
Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc., No. 10-2354, Aug. 4, 2011 (3rd Cir.)

A more permissive approach?
New patent test issued for computer-based inventions
Mayo Collaborative Svcs. v. Prometheus Laboratories, Inc., No. 10-1150, March 20, 2012 (Supreme Court)
CLS Bank Int’l v. Alice Corp. Party Ltd., No. 2011-1301, July 9, 2012 (Fed. Cir.)
Bancorp Svcs., LLC v. Sun Life Assurance Co. of Canada, No. 2011-1467, July 26, 2012 (Fed. Cir.)

Barking up the wrong tree: A trademark case
Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., No. 2011-1482, July 9, 2012 (Fed. Cir.)

The suit must go on
Copyright Act doesn’t preempt TV contract claim
Forest Park Pictures v. Universal Television Network, No. 11-2011-cv, June 26, 2012 (2nd Cir.)

Willful patent infringement standard redefined
Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., 2010-1510, June 14, 2012 (Fed. Cir.)

Clipping YouTube
Second Circuit explains limits of DMCA safe harbors
Viacom Int’l, Inc. v. YouTube, Inc., No. 10-3270, April 5, 2012 (2nd Cir.)

Inequitable conduct dooms drug patents
Aventis Pharma S.A. v. Hospira, Inc., No. 2011-1018, April 9, 2012 (Fed. Cir.)
Therasense, Inc. v. Becton, Dickinson Co., 2008-1511, -1512, -1513, -1514, -1595, May 25, 2011 (Fed. Cir.)

Nothing’s patently obvious, says the Federal Circuit
Mintz v. Dietz & Watson, Inc., No. 2010-1341, May 30, 2012 (Fed. Cir.)

What’s in a name?
Google takes a hit over keyword ads
Rosetta Stone Ltd. v. Google, Inc., No. 10-2007, April 9, 2012 (4th Cir.)

It’s only natural
Supreme Court rejects patents on diagnostic test
Mayo Collaborative Svcs. v. Prometheus Laboratories, Inc., No. 10-1150, March 20, 2012 (Supreme Court)
Bilski v. Kappos, No. 08-964, June 28, 2010 (Supreme Court)

Almost famous: A trademark case
Coach Svcs., Inc. v. Triumph Learning LLC, 2011-1129, Feb. 21, 2012 (Fed. Cir.)

Tread marks and trademarks
Bridgestone Americas Tire Operations, LLC v. Federal Corp., No. 2010-1376, March 16, 2012 (Fed. Cir.)

Do not pass “Go,” do not collect anything
Investment tool ruled unpatentable
Fort Properties, Inc. v. American Master Lease LLC, No. 2009-1242, Feb. 27, 2012 (Fed. Cir.)

Copy that — or not
Congress can restore copyrights to public domain works
Golan v. Holder, No. 10-545, Jan. 18, 2012 (Supreme Court)

Federal Circuit clarifies “co-inventor” test
Falana v. Kent State University, No. 2011-1198, Jan. 23, 2012 (Fed. Cir.)

Psychic didn’t see trademark loss coming
Mercado-Salinas v. Bart Enterprises Int’l, Ltd., No. 10–2359, Dec. 20, 2011 (1st Cir)

Too abstract
Court invalidates patent of automated auto loan service
Dealertrack, Inc. v. Huber, Nos. 2009-1566, -1588, Jan. 20, 2012 (Fed. Cir.)
Bilski et al v. Kappos, No. 08-964, June 28, 2010 (Supreme Court)

When legal distinctions collide
Court explains “tension” between patents and trade secrets
Atlantic Research Marketing Systems, Inc. v. Troy, Nos. 2011-1002, 2011-1003, May 16, 2011 (Fed. Cir.)

Can an SLA constitute copyright misuse?
Apple Inc. v. Psystar Corp, No. 10-15113, Sept. 28, 2011 (9th Cir.)

Ninth Circuit clarifies the ACPA’s reach
GoPets Ltd. v. Hise, Nos. 08-56110, 08-56112, 08-56114, Sept. 22, 2011 (9th Cir.)

Presumed innocent
Federal Circuit addresses permanent injunctions
Robert Bosch LLC v. Pylon Mfg. Corp., 2011-1096, Oct. 13, 2011 (Fed. Cir.)
eBay Inc. v. MercExchange, L.L.C., No. 05-130, May 15, 2006 (Supreme Court)

The America Invents Act
Key components of the patent reform law
A sidebar explains why patent ownership could get more expensive.

Transaction denied
Federal Circuit addresses software patentability
CyberSource Corporation v. Retail Decisions, Inc., No. 2009-1358, Aug. 16, 2011 (Fed. Cir.)
Bilski v. Kappos, No. 08-964, June 28, 2010 (Supreme Court)

Court shelves first-sale doctrine for foreign-made works
John Wiley & Sons, Inc. v. Kirtsaeng, No. 09-4896, Aug. 15, 2011 (2nd Cir.)
Omega S.A. v. Costco Wholesale, Nos. 07-55368, 07-56206, Sept. 3, 2008 (9th Cir.)

Using survey results in false advertising claims
Pernod Ricard USA, LLC v. Bacardi U.S.A., Inc., No. 10-2354, Aug. 4, 2011 (3rd Cir.)

Turning a blind eye backfires
Supreme Court addresses induced patent infringement

Bilski et al v. Kappos, No. 08-964, June 28, 2010 (Supreme Court)

Standard raised for “inequitable conduct” defense
during patent prosecution. This article examines the court’s ruling.
Therasense, Inc. v. Becton, Dickinson and Co., Nos. 2008-1511, -1512, -1513, -1514, -1595, May 25, 2011 (Fed. Cir.)

When trademark and patent injunction standards collide
Voice of the Arab World, Inc. v. MDTV Medical News Now, No. 10-1396, June 8, 2011 (1st Cir.)
eBay Inc. v. MercExchange, L.L.C., No. 05-130, May 15, 2006 (Supreme Court)
Amoco Production Company v. Village of Gambell, No. 85-1239, March 24, 1987 (Supreme Court)

You invent it, you own it
Supreme Court addresses federally funded inventions
Bd. of Trustees v. Roche Molecular Sys., Inc., No. 09-1159, June 6, 2011 (Supreme Court)

Are you hiding something?
Failure to share key information could invalidate a patent
Wellman, Inc. v. Eastman Chemical Co., No. 2010-1249, April 29, 2011 (Fed Cir.)

DuPont factors weigh heavily in banking dispute
Citigroup Inc. v. Capital City Bank Group, Inc., No. 2010-1369, March 28, 2011 (Fed. Cir.)

Playing the Internet domain name game
Newport News Holdings Corp. v. Virtual City Vision, No. 09-1947, April 18, 2011 (4th Cir.)

Better get used to it
Court addresses patent infringement of an information system

Levi Strauss v. Abercrombie & Fitch, No. 09-16322, Feb. 8, 2011 (9th Cir.), Thane International, Inc. v. Trek Bicycle Corp., Nos. 00-55293, 00-55599, Sept. 6, 2002 (9th Cir.)

Getting particular with false marking claims
In re BP Lubricants USA Inc., Misc. Docket No. 960, March 15, 2011 (Fed. Cir.)

You call that art?
Flower display doesn’t make the cut for copyright protection
Kelley v. Chicago Park District, Nos. 08-3701, 08-3712, Feb. 15, 2011 (7th Cir.)

Losing control
Ninth Circuit examines distribution’s role in copyright case
UMG Recordings, Inc. v. Augusto, No. 08-55998, Jan. 4, 2011 (9th Cir.)

Eek! “Naked licensing” leads to lost trademarks
Freecycle Sunnyvale v. The Freecycle Network, No. 08-16382, Nov. 24, 2010 (9th Cir.)

Facts > rules
Federal Circuit rejects familiar formula for patent damages
Uniloc USA Inc. v. Microsoft Corp., 2010-1035, Jan. 4, 2011 (Fed. Cir.)

Can a patentee establish liability for joint infringement?
Akamai Technologies, Inc. v. Limelight Networks, Inc., 09-1372, Dec. 20, 2010 (Fed Cir.)

Do online music providers need a license?
The Second Circuit logs on and weighs in
U.S. v. ASCAP, 09-0539-cv (L), Sept. 28, 2010 (2nd Cir.)

A view to a trademark
Gun manufacturer turns to 007 for help
In re Carl Walther GmbH, No. 77096523, Oct. 26, 2010 (T.T.A.B.)

Generic drug draws preliminary injunction
AstraZeneca LP v. Apotex, Inc., Nos. 2009-1381, 2009-1424, Nov. 1, 2010 (Fed. Cir.)

Conception vs. copying: A patent case
Solvay S.A. v. Honeywell Int’l, Inc., 2009-1161, Oct. 13, 2010 (Fed. Cir.)

Any given Sunday
Fourth Circuit makes the call on fair use
Bouchat v. Baltimore Ravens Limited Partnership, No. 08-2381, Sept. 2, 2010 (4th Cir.)

Patentability after Bilski
USPTO issues interim guidance on process claims
Stauffer v. Brooks Bros., Inc., Nos. 2009-1428, 2009-1430, 2009-1453, August 31, 2010 (Fed. Cir.)

When patent > trademark
Jay Franco & Sons, Inc. v. Franek, No. 09-2155, August 11, 2010 (7th Cir.)

Supreme Court rules on process patentability tests
Bilski v. Kappos, No. 08-964, June 28, 2010 (Supreme Court)
State Street Bank and Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368, July 23, 1998 (Fed. Cir.)

Absolutely crust fallen
Court blocks trade secret defendant from new job
Bimbo Bakeries USA, Inc. v. Botticella, No. 10-1510, July 27, 2010 (3d Cir.)

Fair enough?
Toyota Motor Sales v. Tabari, No. 07-55344, July 8, 2010 (9th Cir.)
AMF INC. v. Sleekcraft Boats, No. 76-1744, June 28, 1979 (9th Cir.)

6 updated exemptions for permissible copyright circumvention

Executive misconduct affects patent enforceability
Avid Identification Systems, Inc. v. Crystal Import Corp., Inc., 2009-1216, -1254, April 27, 2010 (Fed. Cir.)

Google cries “Vive la différence!” in patent case
Bid for Position, LLC v. AOL, LLC and Google, Inc., No. 2009-1068, April 7, 2010 (Fed. Cir.)

Guilt by association
Trademark case addresses “dilution by tarnishment”
V Secret Catalogue, Inc. v. Moseley, No. 08-5793, May 19, 2010 (6th Cir.)

Phrased and confused
Court weighs trademark protection for board game
Zobmondo Entertainment v. Falls Media, LLC, No. 08-56831, April 26, 2010 (9th Cir.)

Going once, going twice … sold!
Court addresses eBay’s liability for contributory infringement
Tiffany Inc. v. eBay, Inc., Case No. 08-3947, Apr. 1, 2010 (2d Cir.) Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 1982

Innocence lost
Fifth circuit hears defense in music downloading case
Maverick Recording Co. v. Harper, No. 08-51194, Feb. 25, 2010 (5th Cir.)

Federal Circuit confirms: Patents need written descriptions
Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 2008-1248, March 22, 2010 (Fed. Cir.)

Looks are everything when it comes to design patents
Richardson v. Stanley Works, Inc., 2008-1596, Feb. 24, 2010 (Fed. Cir.)

Is something afoot?
“Ordinary observer” test used to determine design patent anticipation
International Seaway Trading Corp. v. Walgreens Corp., 2009-1237, Dec. 17, 2009 (Fed Cir.)  Egyptian Goddess, Inc. v. Swisa, Inc., 2006-1562, Sept. 22, 2008 (Fed Cir.)

A game of confusion
Court addresses “likelihood” vs. “absence of actual”
Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 477 F.3d 765, 766, 2007 (2d Cir.)

Federal Circuit clarifies penalty for false patent marking
The Forest Group v. Bon Tool Co., 2009-1044, Dec. 28, 2009 (Fed. Cir.)

Roughed up: Muscle mag ads affect patentability
Iovate Health Sciences, Inc. v. Bio-Engineered Supplements & Nutrition, Inc., No. 2009-1018, 2009 (Fed. Cir.)

Reality check
Court defines distinctiveness standard for marks
Lahoti v. Vericheck, Inc., No. 08-35001, 2009 (9th Cir.)

University learns harsh lesson about assignment agreements
Bd. of Trustees v. Roche Molecular Sys., Inc., No. 2008-1509, 2009 (Fed. Cir.)

What makes derivative works copyrightable?
Schrock v. Learning Curve, Inc., No. 09-1296, 2009 (7th Cir.); Gracen v. Bradford Exchange, 698 F.2d 300, 1983 (7th Cir.)

Fore! Court takes swing at printed publications as bars to patentability
In re Lister, No. 09-1060, 2009 (Fed. Cir.); In re Hall, 781 F.2d 897, 1986 (Fed. Cir.); In re Bayer, 568 F.2d 1357, 1978 (CCPA); In re Cronyn, 890 F.2d 1158, 1989 (Fed. Cir.)

Connecting the dot-coms in a trademark dispute
In re HOTELS.COM, No. 08-1429, 2009 (Fed. Cir.)

Court tackles tricky issue of tacking trademark rights
One Industries, LLC v. Jim O’Neal Distributing, Inc., No. 08-55316, 2009 (9th Cir.)

Who’s your daddy?
Patent inventorship often turns on time of conception
University of Pittsburgh v. Hedrick, No. 08-1468, 2009 (Fed. Cir.)

Taking a swing at the first sale doctrine: 
Resellers raise challenge in trademark infringement case
Citation:  Beltronics USA Inc. v. Midwest Inventory Distribution LLC, 90 USPQ2d 1228 (10th Cir. Apr. 9, 2009).

Rough waters: Inventor’s standing at issue in patent case
Citation: Larson v. Correct Craft, Inc., 2008-1208 (Fed. Cir. 6-5-2009). No. 2008-1208, 2008-1209. Chou v. University of Chicago, Appeal No. 00-1317 (Fed. Cir., July 3, 2001).

Fair or foul? 
What qualifies as transformative use, not copyright infringement
Citation:  A.V. v. iParadigms, LLC (April 16, 2009), No. 08-1424.

Federal Circuit clarifies double patenting test
Citation:  In re Fallaux (Fed. Cir. May 6, 2009).

The keyword results are in: 
Second Circuit issues key decision re: search engines
Rescuecom Corp. v. Google, Inc., No. 06-4881 (2d Cir. 2009); 1-800 Contacts v. WhenU.com, 414 F.3d 400 (2d Cir. 2005)

Patent law:  More madness over business methods
In re Ferguson, No. 07-1232 (Fed. Cir. 2009); In re Bilski, 545 F.3d 943 (Fed. Cir. 2008); Diamond v. Diehr, 450 U.S. 175 (1981)

Can you prove copyright infringement without proof of copying?
Jones v. Blige, No. 07-1051 (6th Cir. 2009)

IP in brief: In re TS Tech USA
Patent court issues critical venue ruling
In re TS Tech USA, 2008 WL 5397522 (Fed. Cir., Dec. 29, 2008)

Too obvious
Federal Circuit extinguishes candleholder patent
Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc. (Fed. Cir. 2/9/09) KSR International Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007)

Video game dispute pits trademark infringement against the First Amendment
E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., No. 06-56237 (9th Cir. 11/5/08).

Patentability of business methods
Resuming the fight in a revised Federal Circuit opinion
In re Comiskey (Fed. Cir. 1/13/09).
In re Bilski, No. 2007-1130 (Fed. Cir. 2008)

IP in brief: Intervest Construction v. Canterbury Estate Homes
Court warns of “thin” protection for architectural works
Intervest Constr., Inc. v. Canterbury Estate Homes, Inc. (11th Cir. 12/22/08).

Picking up the pieces:  Court weighs in on liability for patent-infringing components.
Ricoh Co. Ltd. v. Quanta Computer Inc., No. 2007-1567 (Fed. Cir. 12/23/08)

Pencils down! Federal Circuit adopts definitive test for method patentability.
In re Bilski, No. 2007-1130 (Fed. Cir. 10/30/08)

How do team colors hold up in a trademark dispute?
Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., No. 07-30580 (5th Cir. 11/25/08)

IP in brief: Sold sculptures prompt copyright claim.
Societe Civile Succession Richard Guino v. Renoir, No. 07-15582 (9th Cir. 12/9/08)

Induced patent infringement:  Opinion of counsel matters.  Citation: Broadcom v. Qualcomm, No. 2008-1199 (Fed. Cir. 2008); In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007)

Court declares appropriate test for design patent infringement. 
Citation: Egyptian Goddess, Inc. v. Swisa, 543 F.3d 665 (Fed. Cir. 2008); Gorham v. White, 81 U.S. 511 (1871); Litton Systems, Inc. v. Whirlpool Corp., 728 F.2d 1423 (Fed. Cir. 1984); Smith v. Whitman Saddle Co., 148 U.S. 674 (1893)

Can an implied license defeat a copyright claim?  The importance of addressing ownership rights using written agreements when developing intellectual property. 
Citation: Asset Marketing Systems, Inc. v. Gagnon, 542 F.3d 748 (9th Cir. 2008)

The importance of association:  Automotive trademark faces likelihood of confusion test. 
Citation: AutoZone, Inc. v. Strick, 543 F.3d 923 (7th Cir. 2008).

Congress enacts additional IP protections.
Citation: Pub. L. 110-403

Don’t get burned--  Patent’s inequitable conduct defense requires intent and materiality. 
Citation: Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 88 U.S.P.Q.2d 1001  (Fed. Cir. 2008).

Proving secondary meaning for trademarks.
Citation: E.T. Browne Drug Co. v. Cococare Products, Inc., 538 F.3d 185, 87 U.S.P.Q.2d 1655  (3d Cir. 2008). 

How the first sale doctrine affects foreign-made infringing copies. 
Citation: Omega S.A. v. Costco Wholesale, --- F.3d ----, 2008 WL 4058640 (9th Cir. 2008); Quality King Distributors, Inc. v. L’anza Research Int’l, Inc., 523 U.S. 135 (1998).

Notice of patent infringement trips up defendant. 
Citation: DSW, Inc. v. Shoe Pavilion, Inc., No. 2008-1085 (Fed. Cir. 2008); Wine Railway Appliance Co. v. Enterprise Railway Equipment, 297 U.S. 387 (1936).

Photo finish--  Archives in copyright case ruled privileged.  Citation: Greenberg v. National Geographic Society, No. 05-16964 (11th Cir. 2008); New York Times Co. v. Tasini, 533 U.S. 483 (2001).

Sweet dreams--  Supreme Court enforces patent exhaustion doctrine.   
Citation: Quanta Computer, Inc. v. LG Electronics, Inc., 128 S.Ct. 2109 (U.S. 2008); Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502 (1917); U.S. v. Univis, 316 U.S. 241 (1942).

 “Families” feud over trademark ownership. 
Citation: Estate of Coll-Monge v. Inner Peace Movement, 524 F.3d 1341, 86 U.S.P.Q.2d 1598 (D.C. Cir. 2008). 

Generic trademark lets defendant duck injunction.
Citation: Boston Duck Tours, L.P. v. Super Duck Tours, LLC, No. 07-2078 (1st Cir. 2008).

Can meta tags form the basis for trademark infringement? Citation: North American Medical Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211 (11th Cir. 2008); Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036 (9th Cir. 1999); eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).

PTO patent rules rejected. 
Citation: Tafas v. Dudas, 541 F.Supp.2d 805, 86 U.S.P.Q.2d 1623 (E.D. Va. 2008).

Can’t get more than one satisfaction: Court applies one-satisfaction rule in copyright case. 
Citation: BUC Int’l Corp. v. Int’l Yacht Council Ltd., 517 F.3d 1271 (11th Cir. 2008).

Court broadly interprets “video” license. 
Citation: Intersport Inc. v. NCAA --- N.E.2d --- (Ill. App. 2008).

Foreign relations:  Are famous overseas trademarks protected in the U.S.? 
Citations: ITC Ltd. v. Punchgini, Inc., 518 F.3d 159, 86 U.S.P.Q.2d 1115 (2d Cir. 2008); Grupo Gigante S.A. de C.V. v. Dallo & Co. , 391 F.3d 1088 (9th Cir. 2004).

Patentee strikes out:  Elements matter under doctrine of equivalents.
Citation: Miken Composites, L.L.C. v. Wilson Sporting Goods Co., 515 F.3d 1331, 85 U.S.P.Q.2d 1865 (Fed. Cir. 2008).

Sewing up patent law’s on-sale bar.
Citation: Atlanta Attachment Co. v. Leggett & Platt, Inc. (Fed. Cir. 2008).

All’s fair (use) in copyright infringement. 
Citation: Dudnikov v. Chalk & Vermilion Fine Arts, Inc., 85 U.S.P.Q.2d 1705, 514 F.3d 1063 (10th Cir. 2008).

Court remands trade secrets case. 
Citation: Patriot Homes, Inc. v. Forest River Housing, Inc. 512 F.3d 412 (7th Cir. 2008).

Dog-eat-dog world; Court allows pet toy parodies of famous marks
Citation: Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, No. 06-2267 (4th Cir. 2007)

Doctrine of patent prosecution disclaimer up close
Citation:  Elbex Video, Ltd. v. Sensormatic Electronics Corp., 85 U.S.P.Q.2d 1137 (Fed. Cir. 2007)

Accepting substitutes; Court reviews store brands’ trade dress for infringement
Citation:   McNeil Nutritionals, LLC v. Heartland Sweeteners, LLC, No. 07-2644 (3d Cir. 2007)

Can you use copyrighted thumbnails?  
Citation: Perfect 10 v. Amazon.com, No. 06-55405 (9th Cir. 2007)

Not in the “Nick of Time,” Court rejects retroactive copyright license.
Citation: Davis v. Blige, 505 F.3d 90, 84 U.S.P.Q.2d 1353 (2d Cir. 2007).

Inventions deemed outside of patentable subject matter
Citation:  In re Comiskey¸ No. 06-1286, 499 F.3d 1365, 84 U.S.P.Q.2d 1670 (Fed. Cir. 2007), In re Nuijten, 500 F.3d 1346, 84 U.S.P.Q.2d 1495 (Fed. Cir. 2007),  State St. Bank & Trust Co. v. Signature Fin. Grp., 149 F. 3d 1368 (Fed. Cir. 1998)

Direct infringement or directing infringement? Joint patent infringement standard clarified
Citation:  BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007).

Court “disparages” unusual trademark claim
Citation:  Freecycle Network, Inc. v. Oey, 505 F.3d 898, 84 U.S.P.Q.2d 1530 (9th Cir. 2007).

Too many at bats for a trademark applicant. 
Citation: Central Mfg., Inc. v. Brett 492 F.3d 876 (7th Cir. 2007).

Foreign application provides patent priority.
Citation: Frazer v. Schlegel, 83 U.S.P.Q.2d 1850 (Fed. Cir. 2007); Boston Scientific Scimed, Inc. v. Medtronic Vascular, Inc. (Fed. Cir. 2007).

Court says no enablement, no patent protection.
Citation: Ormco Corp. v. Align Technology, Inc., 2007 WL 2404723, 84 U.S.P.Q.2d 1146 (Fed. Cir. 2007).

No copyright protection for NYMEX selling prices.
Citation: New York Mercantile Exchange, Inc. v. Intercontinental Exchange, Inc. 497 F.3d 109 (2d Cir. 2007).

A secondary consideration:  Court rejects third-party liability for copyright, trademark infringement. Citation:  Perfect 10 v. Visa Int’l, --- F.3d ----, 83 U.S.P.Q.2d 1144, (9th Cir. 2007).

It’s in the way that you use it:  Court allows some “use” prior to patent application. Citation:  Motionless Keyboard Co. v. Microsoft Corp., 486 F.3d 1376, 82 U.S.P.Q.2d 1801 (Fed. Cir. 2007); Egbert v. Lippman, 104 U.S. 333 (1881); Electric Storage Battery Co. v. Shimadzu, 307 U.S. 5 (1939).

Energy drinks battle over trade dress. Citation:  Hansen Beverage Co. v. National Beverage Corp., 83 U.S.P.Q.2d 1276 (9th Cir. 2007)

Damages awarded for unauthorized but unused copies. Citation:  Thoroughbred Software Int’l v. Dice Corp., 488 F.3d 352, 83 U.S.P.Q.2d 1040 (6th Cir. 2007).

Patented pedals hit the brakes:  Supreme Court lowers the “obviousness” bar. Citation:  KSR Int’l Co. v. Teleflex Inc., No. 04-1350 (U.S. 2007); Graham v. John Deere Co. (1), 383 U.S. 1 (1966).

Made in America?  Foreign-copied software escapes U.S. patent law. Citation:  Microsoft Corp. v. AT&T Corp., No. 05-1056 (U.S. 2007).

Court finds lawyers too generic:  Lawyers.com, that is. Citation:  In re Reed Elsevier Properties, Inc., No. 06-1309 (Fed. Cir. 2007).