Intellectual Property Archives

Apr 11, 2019

Brunetti and the Tests of Tam

On Monday, April 15, 2019 arguments in the Brunetti case [Iancu v. Brunetti, No. 18-302] will be heard at the United States Supreme Court. Erik Brunetti seeks to register the mark FUCT for clothing. Brunetti’s application was rejected for registration by the United States Patent and Trademark Office on the basis that it violates the Lanham Act, 15. U.S.C. 1052(a) which prohibits the registration of marks comprised of “immoral” or “scandalous” matter. The arguments by the government and Brunetti are sure to echo some of the arguments made in the so-called SLANTS case, Matal v. Tam, 137 S. Ct. 1744… Read more

Apr 11, 2019

Federal Circuit Declines to Give Deference to the USPTO

More patents directed to diagnostic methods were found to be invalid as directed to the ineligible subject matter in Cleveland Clinic Foundation v. True Health Diagnostics, LLC, Case No. 2018-1218 (Fed. Cir. April 1, 2018). The Court of Appeals for the Federal Circuit applied the “Alice two-step” test and found the claims in U.S. Patent Nos. 9,575,065 and 9,581,597 invalid under § 101. This holding may come as a surprise to some because Cleveland Clinic argued, among other things, that the claims at issue mirrored Example 29-Claim 1 in the USPTO guidance published on May 4, 2016 (“referred to as… Read more

Apr 4, 2019

Avoid Truthful But Misleading Advertising

Street Advertising - Misleading Advertising

Avoid truthful but misleading advertising. Be careful what you say, especially about your competitors. As expected, competitors are sensitive to any negative allegations made about their products or services, since it may likely have an effect on the business’s sales and reputation. Some competitors may even file a lawsuit to enjoin the use of such statements, even if the statements are technically true. On March 21, 2019, MillerCoors, LLC (“MillerCoors”), which sells Miller Lite and Coors Light, filed a complaint against Anheuser-Busch Companies, LLC (“AB”), which sells Bud Light, after the Bud Light commercials shown during Super Bowl LIII and… Read more

Mar 7, 2019

Using Inventorship Challenges to Facilitate the Resolution of Misappropriation of Trade Secrets Claims

Coda Development S.R.O., v Goodyear Tire & Rubber Company (Fed. Cir. 2019), presents an interesting case: the use of an inventorship challenge to facilitate the resolution of an alleged misappropriation of trade secrets following unsuccessful negotiations. Coda sought inventorship correction in several patents filed by Goodyear involving self-inflating tire (“SIT”) technology, including US No. 8,042,586 (“ ‘586”), and compensation for the misappropriation of SIT trade secrets. The District Court (N.D. Ohio) dismissed Coda’s complaint for failing to state a claim upon which relief could be granted and denied Plaintiffs’ leave to amend the complaint. Plaintiffs appealed both the dismissal and… Read more

Feb 21, 2019

Legal Update: On-Sale Bar Applies to Secret Sales

On January 22, 2019, the Supreme Court held that amendments by the America Invents Act (AIA) to the U.S. Patent Act did not exclude secret sales from the on-bar sale doctrine, meaning such sales that occur before a patent’s filing can lead to its invalidation. The issue was whether the amendment that added the phrase “or otherwise available to the public” changed the meaning of “on sale”, such that the claimed invention of the sale itself had to be publicly disclosed in order for the sale to be an invalidating prior art event. (Read the original article on this topic.)… Read more

Feb 20, 2019

Establishing Proper Venue in Patent Cases

Patent Cases: Is Computer Equipment Proper Venue?

Can Computer Equipment Serve as a “Regular and Established Place of Business” in Patent Cases? On February 5, 2019, the Federal Circuit denied rehearing en banc in In Re Google LLC, 2018-152 (Fed. Cir. Feb. 5, 2019), leaving unsettled the question of whether the presence of computer servers satisfies the “regular and established place of business” requirement for establishing proper venue in patent cases. The Federal Circuit’s decision stems from patent litigation initiated by SEVEN Networks, LLC against Google in U.S. District Court for the Eastern District of Texas. SEVEN Networks, LLC v. Google LLC, 2:17-cv-442-JRG (E.D. Tex.). In that… Read more

Jan 30, 2019

Adjusting Patent Term Adjustment: Fed. Cir. Makes Additional PTA Possible.

On January 23, 2019, the Court of Appeals for the Federal Circuit significantly altered the rules concerning the possible amount of Patent Term Adjustment (PTA) available to patentees. In Supernus Pharmaceuticals, Inc. v. Iancu, WL 286925 (Fed. Cir, 2019), the Federal Circuit held that the United States Patent and Trademark Office (USPTO) exceeded its rulemaking authority by assessing a PTA reduction that exceeded the statutory limitations. PTA is calculated by adding delay in prosecution attributable to the USPTO and subtracting delay attributed to the applicant. The net number of days is awarded as PTA to the granted patent. Supernus Pharmaceuticals,… Read more

Jan 24, 2019

More on the Revised Subject Matter Eligibility Guidance

In a recent edition of our IP newsletter, we introduced the U.S. Patent and Trademark Office’s (USPTO) new guidelines for subject matter eligibility. Below, we provide additional thoughts and strategies for pursuing patent applications in light of these new guidelines. The “2019 Revised Subject Matter Eligibility Guidance” (Revised Guidance), effective January 7, 2019, varies the analysis for patent examiners and administrative patent judges in applying the Alice/Mayo test. Analysis under the Revised Guidance begins with a consideration of whether the claim limitations recite a process, a machine, a method of manufacture, or a composition of matter. This is Step 1… Read more

Jan 16, 2019

New Guidelines for Patent Subject Matter Eligibility from the USPTO

On January 7, 2019, the new guidelines for patent subject eligibility went into effect at the United States Patent and Trademark Office (“USPTO”). These guidelines, titled “2019 Revised Patent Subject Matter Eligibility Guidance” (herein “2019 Guidelines”), were the fifth update issued by the USPTO regarding subject matter eligibility since the Supreme Court’s opinions in the Myriad, Mayo, and Alice cases. As a result of the trio of cases, the USPTO had developed the Alice/Mayo test to determine subject matter eligibility. The Alice/Mayo test was a two-step test, with Step 1 determining whether the claim is directed to a process, machine,… Read more

Jan 9, 2019

Supreme Court Hears Arguments on On-Sale Bar for Patentability

Does a secret sale of a patented invention that occurred before the filing of a patent application count as invalidating prior art? That question was the recent focus of oral arguments before the Supreme Court recently in the case of Helsinn Healthcare S.A. v. Teva Pharmaceutical USA. Before the passage of the America Invents Act (“AIA”) in 2011, the question had been well settled. Section 102 of the Patent Act, defining conditions for patentability, stated that a person was entitled to a patent for an invention unless the invention was “in public use or on sale in this country, more… Read more