Mealey's Intellectual Property

  • December 13, 2019

    United States Counsels Against Certiorari In Schizophrenia Treatment Patent Suit

    WASHINGTON, D.C. — Although the U.S. government acknowledges that ambiguity exists as to the patentability of method-of-treatment patterns under Section 101 of the Patent Act, in a Dec. 6 amicus curiae brief the government suggests that the U.S. Supreme Court deny a petition for certiorari by the maker of a generic schizophrenia drug, stating that the present case did not provide an optimal vehicle to consider the matter because the Federal Circuit U.S. Court of Appeals reached the correct decision in the underlying patent dispute despite the existing confusion (Hikma Pharmaceuticals USA Inc., et al. v. Vanda Pharmaceuticals USA Inc., No. 18-817, U.S. Sup.).

  • December 13, 2019

    Oracle Waives Response To Rimini’s Certiorari Petition Over Copyright Injunction

    WASHINGTON, D.C. — Nine months after the U.S. Supreme Court ruled against it in a dispute over an award of nontaxable costs in a long-running software copyright lawsuit, Oracle USA Inc. on Dec. 6 waived its right to respond to a new petition for certiorari filed by defendant Rimini Street Inc., this time over the propriety of a permanent injunction against an “innocent” infringer (Rimini Street Inc., et al. v. Oracle USA Inc., et al., No. 19-589, U.S. Sup.).

  • December 13, 2019

    Missouri Federal Magistrate Judge Won’t Dismiss DMCA Claim

    ST. LOUIS — “Stickers” depicting a plaintiff’s name and logo placed on a copyrighted work “may constitute” copyright management information (CMI), a federal magistrate judge in Missouri ruled Dec. 10 (etrailer Corp. v. TexTrail Inc., No. 19-2490, E.D. Mo., 2019 U.S. Dist. LEXIS 212304).

  • December 13, 2019

    Petitioner To High Court:  Unresolved Trademark Defenses Are Allowed In Second Suit

    WASHINGTON, D.C. — With U.S. Supreme Court oral arguments a month away, a clothing manufacturer argues in its Dec. 12 reply brief that claim preclusion did not prevent it from asserting a release defense to trademark claims against it because the present law suit involves different claims and facts from a previous lawsuit between the same parties, asking the high court to overturn an “unprecedented decision” to the contrary by the Second Circuit U.S. Court of Appeals (Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086, U.S. Sup.).

  • December 12, 2019

    Appellee Defends Patent Board Obviousness Findings In Brief

    WASHINGTON, D.C. — In a Nov. 20 redacted appellee brief, a petitioner for inter partes review (IPR) defended a determination by the Patent Trial and Appeal Board that three patents relating to oil transport are obvious (LiquidPower Specialty Products Inc. v. Baker Hughes, No. 19-1838, Fed. Cir.).

  • December 12, 2019

    Panel Affirms Rejection Of Patent Application Under Section 101

    WASHINGTON, D.C. — In a Dec. 10 ruling, the Federal Circuit U.S. Court of Appeals upheld a determination by the Patent Trial and Appeal Board that a claimed computer-conducted method of identifying tax entitlement is ineligible for patenting (In re:  Mark Alfred Greenstein, No. 19-1520, Fed. Cir., 2019 U.S. App. LEXIS 36494).

  • December 12, 2019

    United States Intervenes To Defend Inter Partes Review Of Pre-AIA Patents

    WASHINGTON, D.C. — In a Dec. 9 intervenor brief, the U.S. government tells the Federal Circuit U.S. Court of Appeals that inter partes review (IPR) of a patent issued prior to passage of the Leahy-Smith America Invents Act (AIA) is not a retroactive application of the law but that even if it were, it would not violate due process (Sound View Innovations LLC v. Hulu LLC, et al., Nos. 19-1865, -1866, -1867, Fed. Cir.).

  • December 11, 2019

    Video Storage Database, Search Query Patent Singled Out For Review

    ALEXANDRIA, Va. — In a Dec. 9 petition for inter partes review (IPR) by the Patent Trial and Appeal Board, a petitioner alleges that a claimed database for video storage would have been obvious to a person of skill in the art (POSA) at the time it was patented (Free Stream Media Corp. v. Gracenote Inc., No. IPR2020-00219, PTAB).

  • December 11, 2019

    In Blow To Government, High Court Says PTO Cannot Recoup Fees

    WASHINGTON, D.C. — The U.S. Supreme Court ruled Dec. 11 that the plain text of Section 145 of the Patent Act “does not overcome” the presumption against fee shifting established by the “American Rule,” a “bedrock principle” that litigants pay their own fees absent authorization by a statute or contract (Laura Peter v. NantKwest Inc., No. 18-801, U.S. Sup.).

  • December 10, 2019

    9th Circuit Dismisses Appeal In Tribal Name, Leadership Row

    SAN FRANCISCO — The latest appellate challenge in a long-running dispute over who is the rightful leader of a California Indian tribe ended Dec. 9 before it began when the Ninth Circuit U.S. Court of Appeals dismissed an appeal by another tribe seeking to intervene for failure to prosecute (Shingle Springs Band of Miwok Indians v. Cesar Caballero v. Wopumnes Nisenan-Mewuk Tribe, No. 19-16576, 9th Cir., 2019 U.S. App. LEXIS 36433).

  • December 10, 2019

    Panel Upholds Limited Injunction In Trademark Dispute Between Brothers

    CHICAGO — In entering relief following a jury trial, a Wisconsin federal judge did not abuse his discretion in requiring a trademark infringer to run only a disclaimer that makes clear it is not associated with a trademark owner, a Seventh Circuit U.S. Court of Appeals panel ruled Dec. 9 (Fabick Inc. v. JFTCO Inc., Nos. 19-1760 & 19-1872, 7th Cir., 2019 U.S. App. LEXIS 36418).

  • December 10, 2019

    Volkswagen:  Engine Output Patent Would Have Been Obvious

    ALEXANDRIA, Va. — In a Dec. 9 petition for inter partes review (IPR), Volkswagen Group of America Inc. tells the Patent Trial and Appeal Board that a patented technique for controlling vehicle engine output claims “basic operations” and recites “well-known methods” (Volkswagen Group of America Inc. v. Michigan Motor Technologies LLC, No. IPR2020-00169, PTAB).

  • December 10, 2019

    Panel Affirms:  Petitioner Lacks Standing To Seek Trade Dress Cancellation

    WASHINGTON, D.C. — The Federal Circuit U.S. Court of Appeals on Dec. 9 found that it lacks appellate jurisdiction over an appeal of a dismissal, on standing grounds, by the Trademark Trial and Appeal Board (TTAB) of a trade dress cancellation petition (Todd C. Bank v. Al Johnson’s Swedish Restaurant & Butik Inc., No. 19-1880, Fed. Cir.).

  • December 09, 2019

    Appealability Of Patent Board Time-Bar Rulings Debated At Supreme Court

    WASHINGTON, D.C. — The U.S. government on Dec. 9 told the U.S. Supreme Court that a determination of timeliness by the U.S. Patent and Trademark Office (PTO)’s Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) is not judicially reviewable (Thryv Inc. v. Click-To-Call Technologies L.P., et al., No. 18-916, U.S. Sup.).

  • December 09, 2019

    Certiorari Denied In Copyright Dispute Over Children’s Book

    WASHINGTON, D.C. — In its Dec. 9 orders list, the U.S. Supreme Court turned away an author’s challenge to a decision by the Third Circuit U.S. Court of Appeals that affirmed dismissal of copyright infringement allegations against a movie studio and book publisher (Jennie Nicassio v. Viacom International Inc., et al., No. 19-560, U.S. Sup.).

  • December 09, 2019

    Permanent Injunction Issued Barring Defendant From Using ‘Bok Bok’

    SEATTLE — On the heels of a September summary judgment ruling in favor of a trademark infringement counterclaimant, a federal judge on Dec. 6 permanently enjoined further use of the “Bok Bok” unregistered mark by a plaintiff in the state of Washington (BBC Group NV LLC v. Island Life Restaurant Group LLC, No. 18-1011, W.D. Wash., 2019 U.S. Dist. LEXIS 210866).

  • December 09, 2019

    Illinois Federal Judge: Collateral Estoppel Bars Patent Action

    CHICAGO — In a Dec. 5 holding a federal judge in Illinois agreed with two defendants that two patents disclosing a device designed to secure portable electronic devices are invalid for the same reasons articulated by the Patent Trial and Appeal Board (PTAB) in its invalidation of two related patents owned by the plaintiff (Think Products Inc. v. ACCO Brands Corporation, et al., No. 18-7506, N.D. Ill., 2019 U.S. Dist. LEXIS 209426).

  • December 09, 2019

    On Remand, Zillow Seeks Dismissal Of Real Estate Photo Copyright Suit

    SEATTLE — Two months after the U.S. Supreme Court declined to take up a copyright infringement dispute over the use of photos by Zillow Inc. in its online real estate listings, Zillow, on remand, moved for judgment on the pleadings on Dec. 6, telling a Washington federal court that an intervening “landmark ruling” by the high court in Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881 (2019), mandates dismissal of a real estate photography firm’s claims against it because copyrights in the photos at issue were not registered before the suit was filed (VHT Inc. v. Zillow Group Inc., et al., No. 2:15-cv-01096, W.D. Wash.).

  • December 06, 2019

    Federal Circuit: Jury Trial Required In FRAND Rate Row

    WASHINGTON, D.C. — A California federal judge erred in denying a patent owner a jury trial on the calculation of a release payment based upon retrospective “fair, reasonable and non-discriminatory” (FRAND) rates for past unlicensed sales by appellees, the Federal Circuit U.S. Court of Appeals ruled Dec. 4 (TCL Communication Technology Holdings Ltd., et al. v. Ericsson Inc., et al., Nos. 2018-1363, -1732, Fed. Cir., 2019 U.S. App. LEXIS 36090).

  • December 05, 2019

    Facebook Persuades Board To Review Blackberry Info Pushing Patent

    ALEXANDRIA, Va. — A Blackberry Ltd. patent claiming a system and method for pushing information to a handheld device will be subject to upcoming inter partes review (IPR) by the Patent Trial and Appeal Board, the board announced Dec. 4 (Facebook Inc., et al. v. Blackberry Ltd., No. IPR2019-00941, PTAB).