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).

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, appears 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).