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. Michelle chairs the firm's Trademark & Copyright Practice Group and David co-chairs the firm's Artificial Intelligence Practice Group.

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).

Dave S. Christensen and Maggie Russell's article, US subject matter eligibility no longer just for software and biotechnology practitioners, appears in The Patent Lawyer Magazine.

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 Dave Christensen's article, "Every Word Matters in Trade Secrets Agreements."

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).

The Intellectual Property Organization (IPO) published the white paper, "Protecting Inventions Relating to Artificial Intelligence: Best Practices," written by members of its Software-Related Inventions Committee and the Artificial Intelligence & New Emerging Technologies Committee. Cantor Colburn partner David Kincaid, Co-Chair of Cantor Colburn's Artificial Intelligence Practice Group, serves on both committees.

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).