Mealey's Intellectual Property

  • December 8, 2017

    Board Sides Partly With Petitioner In Covered Business Method Patent Review

    ALEXANDRIA, Va. — The Patent Trial and Appeal Board in a Dec. 7 ruling deemed 32 claims of a method patent for “Click Based Trading with Intuitive Grid Display of Market Depth” unpatentable pursuant to Section 101 of the Patent Act, 35 U.S.C. § 101 (IBG LLC, et al. v. Trading Technologies International Inc., No. CBM2016-00090, PTAB).

  • December 7, 2017

    Federal Circuit Vacates False Marking Judgment, Affirms In Other Respects

    WASHINGTON, D.C. — A Florida federal judge’s rejection of allegations a patent owner failed to mark its products was vacated Dec. 7 by the Federal Circuit U.S. Court of Appeals, which found that although it is an accused infringer’s duty to produce evidence of unmarked products, it remains a patentee’s duty to prove that the products in question do not practice the patented invention (Arctic Cat Inc. v. Bombardier Recreational Products Inc., et al., No. 17-1475, Fed. Cir.).

  • December 7, 2017

    Pedometer Patent Singled Out For Inter Partes Review In New Petition

    ALEXANDRIA, Va. — A fitness technology company took aim Dec. 5 at a patented pedometer in a petition for inter partes review (IPR) by the Patent Trial and Appeal Board, asserting that the straps, step-counters, heart-rate monitors, data processors, transmitters and receivers included in the invention were “basic” and “well-known” to a person of skill in the art (POSITA) (Wahoo Fitness LLC v. Blackbird Tech LLC, No. IPR2018-00275, PTAB).

  • December 7, 2017

    Indiana Magistrate Judge Denies Wal-Mart Request To Transfer Trademark Case

    SOUTH BEND, Ind. — Efforts by Wal-Mart.com USA LLC and a co-defendant to move allegations of trademark infringement to the U.S. District Court for the Northern District of California were unsuccessful Dec. 6, when an Indiana federal magistrate judge found that “the only factor that narrowly favors transfer is convenience of the third-party Chinese witnesses” (Dwyer Instruments Inc. v. Wal-Mart.com USA LLC, et al., No. 17-636, N.D. Ind., 2017 U.S. Dist. LEXIS 200566).

  • December 6, 2017

    Trademark Dispute Over Literacy Program Survives Dismissal Request In Texas

    DALLAS — Efforts by a defendant to obtain dismissal of trademark infringement allegations stemming from the use of — among other things — a million-dollar bill bookmark in connection with a literacy program were unsuccessful on Dec. 5, when a Texas federal judge denied the request (Springboards to Education v. Demco Inc., et al., No. 16-2398, N.D. Texas).

  • December 6, 2017

    Board Cancels Various Claims Of User ID, Access Control Code Tracking Patent

    ALEXANDRIA, Va. — In a Dec. 5 final written decision, the Patent Trial and Appeal Board agreed with an inter partes review (IPR) petitioner that various claims of a patented system for conveying geographical information about a person or object to a group of users would have been obvious to a person of skill in the art (TV Management Inc., d/b/a GPS North America v. Perdiemco LLC, No. IPR2016-01061, PTAB).

  • December 5, 2017

    Federal Circuit Largely Sides With Patent Board In Consolidated Appeal

    WASHINGTON, D.C. — In a Dec. 5 ruling, the Federal Circuit upheld findings of patent invalidity by the Patent Trial and Appeal Board in two cases but ruled against the board — and in favor of three inter partes review (IPR) petitioners — in a third case, in which the board deemed the disputed technology patentable (CRFD Research Inc. v. Joseph Matal, No. 16-2198; CRFD Research Inc. v. DISH Network Corp., No. 16-2298; Hulu LLC v. CRFD Research Inc., No. 16-2437, Fed. Cir.).

  • December 5, 2017

    Cattle Insemination Method Patent Is Obvious, Challenger Tells Board

    ALEXANDRIA, Va. — In a Dec. 4 petition for inter partes review (IPR), a bovine reproductive technology company argues to the Patent Trial and Appeal Board that using sex-sorted sperm to produce two or more embryos of a desired sex is unpatentable pursuant to Sections 102 and 103 of the Patent Act, 35 U.S.C. §§ 102, 103 (Trans Ova Genetics LC v. XY LLC, No. IPR2018-00249, PTAB).

  • December 5, 2017

    Florida Federal Judge: Trademark Not Promoted In Unsolicited Facsimiles

    WEST PALM BEACH, Fla. — Citing a lack of personal jurisdiction over two defendants accused of violating the Telephone Consumer Protection Act (TCPA), a Florida federal judge on Dec. 1 reversed course, vacating his earlier finding that unsolicited facsimile (fax) advertisements bearing the “Ulesfia” trademark were sent on behalf of the mark owner (S.A.S.B. Corporation, et al., v. Concordia Pharmaceuticals Inc., et al., No. 16-14108, S.D. Fla., 2017 U.S. Dist. LEXIS 199021).

  • December 4, 2017

    Federal Circuit Upholds Claim Constructions, Obviousness Holding

    WASHINGTON, D.C. — Findings by the Patent Trial and Appeal Board that various challenged patent claims would have been obvious to a person of skill in the art were affirmed Nov. 30 by the Federal Circuit U.S. Court of Appeals, which found no error in the board’s differing construction of “internet protocol” and “Internet protocol” (AIP Acquisition LLC v. Cisco Systems Inc., No. 16-2371, Fed. Cir., 2017 U.S. App. LEXIS 24192).

  • December 4, 2017

    Federal Circuit Vacates Obviousness Holding By Board, Sides With Microsoft

    WASHINGTON, D.C. — Although affirming a construction by the Patent Trial and Appeal Board of the claim term “request,” the Federal Circuit U.S. Court of Appeals on Dec. 1 nonetheless vacated in full the board’s determination that two patents are nonobvious and partly vacated the board’s holding that the patents are not anticipated by prior art (Microsoft Corp., et al., v. Parallel Networks Licensing LLC, Nos. 2016-2515, -2517, -2518, -2519, -2642, -2644, -2645, -2646, Fed. Cir., 2017 U.S. App. LEXIS 24333).

  • December 4, 2017

    Citing Micron, Federal Circuit Grants Mandamus Petition In Patent Case

    WASHINGTON, D.C. — In a Nov. 15 grant of mandamus released Dec. 1, the Federal Circuit U.S. Court of Appeals vacated a Minnesota federal judge’s decision to transfer a patent case to the U.S. District Court for the Western District of Pennsylvania (In re:  Cutsforth Inc., No. 17-135, Fed. Cir.).

  • December 4, 2017

    Adult Site Owner’s Petition Over Vicarious, Direct Copyright Infringement Denied

    WASHINGTON, D.C. — In its Dec. 4 order list, the U.S. Supreme Court denied certiorari to the operator of an adult website that had appealed a Ninth Circuit U.S. Court of Appeals ruling that a usenet provider was not liable for direct or vicarious infringement of its copyrighted images due to a lack of volitional conduct (Perfect 10 Inc. v. Giganews Inc., et al, No. 17-320, U.S. Sup., 2017 U.S. LEXIS 7259).

  • December 1, 2017

    Fastener Maker Tells 8th Circuit Fraud, Mark Lapse Defeat Infringement Claims

    ST. LOUIS — In a Nov. 20 appellee brief, the defendant in a long-running dispute over the “Sealtight” and “Sealtite” trademarks asks the Eighth Circuit U.S. Court of Appeals to affirm a trial court’s judgment in its favor, citing its opponent’s fraud on the U.S. Patent and Trademark Office (PTO), as well as a lapse in the plaintiff’s registration for its purportedly incontestable trademark (B&B Hardware Inc. v. Hargis Industries Inc., No. 17-1570 and 17-1755, 8th Cir.).

  • December 1, 2017

    Ownership Of 1973 Song’s Copyrights Debated In 2nd Circuit Briefs

    NEW YORK — In briefs filed with the Second Circuit U.S. Court of Appeals, a rhythm and blues band and other parties connected with a 1973 song they recorded, spar over ownership of the song’s copyrights, notably related to recent songs that sampled the old recording (John Wilson, et al. v. Dynatone Publishing Co., et al., No. 17-1549, 2nd Cir.).

  • December 1, 2017

    Furniture Maker Seeks High Court Review Of Tea Rose- Rectanus Doctrine Ruling

    WASHINGTON, D.C. — A Ninth Circuit U.S. Court of Appeals ruling deepened a circuit split on the interpretation of good faith adoption of a regional, common-law trademark under the Tea Rose-Rectanus doctrine, a furniture manufacturer argues in a Nov. 13 petition for certiorari, asking the U.S. Supreme Court to provide guidance on the matter (Omnia Italian Design Inc. v. Stone Creek Inc., No. 17-731, U.S. Sup.).

  • December 1, 2017

    Hearing Held On Tribal Sovereign Immunity, Inter Partes Review

    WASHINGTON, D.C. — The House Judiciary Subcommittee on Courts, Intellectual Property and the Internet convened Nov. 7 to discuss the recent trend of private companies entering into intellectual property agreements with Native American tribes to stave off inter partes review (IPR) challenges before the Patent Trial and Appeal Board by invoking the doctrine of tribal sovereign immunity.

  • December 1, 2017

    Tech Firm To High Court: Federal Circuit Misapplied Alice In Apple ITunes Suit

    WASHINGTON, D.C. — Seeking review of a Federal Circuit U.S. Court of Appeals ruling that reversed a judgment ruling in its favor, a Texas tech firm tells the U.S. Supreme Court in a Nov. 9 petition for certiorari that a panel incorrectly applied the patent eligibility test of Alice Corp. v. CLS Bank Int’l in deeming its patents abstract and not patent-eligible (Smartflash LLC, et al. v. Apple Inc., No. 17-697, U.S. Sup.).

  • December 1, 2017

    Pfizer Immunogenic Patent Targeted In New Petition For Inter Partes Review

    ALEXANDRIA, Va. — A patented immunogenic composition would have been obvious to a person of skill in the art, Sanofi Pasteur Inc. and SK Chemicals Co. Ltd. (Sanofi, collectively) assert in a Nov. 20 petition for inter partes review by the Patent Trial and Appeal Board (Sanofi Pasteur Inc. and SK Chemicals Co. Ltd. v. Pfizer Inc., No. IPR2018-0187, PTAB).

  • December 1, 2017

    Bill Of Costs In Patent Dispute Debated In Briefs Before Federal Circuit

    WASHINGTON, D.C. — An Illinois federal judge’s decision to award General Electric Co. (GE) $94,813.95 in costs in connection with its successful defense of patent infringement allegations was erroneous, the patent owner recently told the Federal Circuit U.S. Court of Appeals (Henryk Olesky v. General Electric Company, No. 17-2225, Fed. Cir.).