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Mealey's Intellectual Property

May 29, 2024
Panel: Failure To Rebut Evidence Of Senior Use Dooms Trademark Case

NEW YORK — A trademark infringement counterclaimant failed May 28 to persuade the Second Circuit U.S. Court of Appeals to reinstate a dispute over “Now-Casting” and “Nowcast” with the appeals court concluding the appellant “utterly failed to proffer any evidence rebutting” a competitor’s showing that it was the first to use the trademarks.
May 29, 2024
3rd Circuit Upholds Denial Of Reconsideration Of Mark Cancellation

PHILADELPHIA — A federal judge in New Jersey committed no abuse of discretion in denying a motion for reconsideration of his January 2019 summary judgment holding that ordered the U.S. Patent and Trademark Office (USPTO) to cancel two trademarks because the motion was untimely and without merit, the Third Circuit U.S. Court of Appeals ruled May 28.
May 29, 2024
Patent Owner Wins More Time To Reply To Novartis Appellee Brief

WASHINGTON, D.C. — The Federal Circuit U.S. Court of Appeals on May 28 granted a patent owner a 14-day extension of its deadline to reply to claims by Novartis Pharmaceuticals Corp. that the doctrine of collateral estoppel bars review of a decision by the Patent Trial and Appeal Board that canceled a patented form of polymorphic fingolimod hydrochloride.
May 29, 2024
Tool Firm To Nevada Supreme Court: No Strict Liability For Trademark Licensor

CARSON CITY, Nev. — Filing a May 28 brief responding to a question certified to the Nevada Supreme Court by a federal judge, a tool company that licensed its trademark for use on a tool at the heart of a products liability suit asks the high court to find that strict liability applies under the apparent manufacturer doctrine only if a licensor is substantially involved with the product beyond merely providing the trademark.
May 29, 2024
Tech Firm Asks High Court To Address Impact Of Patent Term Adjustment On Validity

WASHINGTON, D.C. — A cellular and mobile technology company filed a petition for certiorari asking the U.S. Supreme Court to determine that a patent that has had its expiration extended under patent term adjustment (PTA), due to application delays by the U.S. Patent and Trademark Office (PTO), should not then be susceptible to findings of obviousness and invalidity.
May 28, 2024
ISP Tells 4th Circuit Labels’ Misconduct Merits Relief, Discovery In Copyright Row

RICHMOND, Va. — An internet service provider (ISP), which was found liable for its subscribers’ infringing behavior in downloading copyrighted songs, entreaties the Fourth Circuit U.S. Court of Appeals to find that it was wrongly deprived of the opportunity to conduct additional discovery and seek relief from the infringement judgment after it was discovered that the plaintiff record labels engaged in discovery misconduct by withholding and misrepresenting evidence from their investigation firm that was used against the ISP at trial.
May 28, 2024
High Court Passes On Another Challenge To Federal Circuit Rule 36 Judgments

WASHINGTON, D.C. — The owner of a patent canceled by the Patent Trial and Appeal Board (PTAB) as anticipated by prior art failed May 28 to persuade the U.S. Supreme Court to review the Federal Circuit U.S. Court of Appeals’ practice of affirming without an opinion when certain conditions exist and the panel determines an opinion will have no precedential value.
May 28, 2024
Board Institutes Google Petitions For Review Of Encryption Patents

ALEXANDRIA, Va. — A method of securing data that relies on repeatedly parsing and splitting data will be the subject of inter partes review (IPR), the Patent Trial and Appeal Board has announced in a preliminary win for petitioner Google LLC.
May 28, 2024
In Cribl And Splunk Copyright Fight, Fair Use Finding Explained

SAN FRANCISCO — A federal judge in California on May 24 issued an opinion detailing the rationale behind his instruction to jurors that certain copying and uses of Splunk Inc. software by Cribl Inc. qualify as fair use under federal copyright law, as well as an order in which he declared that a violation of California’s unfair competition law (UCL) can be premised on allegations of copyright misuse and rejected the copyright owner’s position that fair use rights can be “contracted away.”
May 28, 2024
Judge Faults Lengthy ChatGPT Complaint As Akin To Town Hall Fodder

SAN FRANCISCO — Plaintiffs’ lengthy complaint against Microsoft Corp. and various OpenAI entities over the training of artificial intelligence raises policy concerns more appropriate in a town hall than a courtroom, a federal judge in California said May 24 in granting motions to dismiss a class complaint that includes allegations under the California unfair competition law (UCL) and other state laws.
May 24, 2024
Minority Winery Owner Can’t Satisfy Lexmark In Bid To Cancel Trademarks

WASHINGTON, D.C. — A minority owner of a California winery on May 23 failed to persuade the Federal Circuit U.S. Court of Appeals to direct the Trademark Trial and Appeal Board to reinstate its petitions for cancellation of the “ALVAREDOS-HOBBS” and “HILLICK AND HOBBS” trademarks for use in connection with wine.
May 24, 2024
Media Companies Seek Opportunity To Respond To OpenAI’s New Standing Challenge

NEW YORK — After briefing wrapped on artificial intelligence companies’ motion to dismiss two media companies’ Digital Millennium Copyright Act (DMCA) case for lack of standing, the media companies accused OpenAI Inc. and the other defendants of changing their argument mid-briefing and on May 23 asked a New York federal court for leave to file a surreply so they could respond.
May 24, 2024
Federal Circuit Undoes Patent Priority Determination, Endorses 2-Way Test

WASHINGTON, D.C. — A motion by the owner of a junior patent for a finding that a senior patent application was time-barred was wrongly rejected by the Patent Trial and Appeals Board in an interference proceeding, the Federal Circuit U.S. Court of Appeals held May 23, vacating and remanding the board’s subsequent decision to award priority to the patent applicants.
May 23, 2024
Motion To Dismiss Sinks Copyright Claims Over Scuba Diving Cop Show

NEW YORK — A federal judge in New York has dismissed with prejudice allegations of copyright infringement leveled by an author who says he was first to conceive of the idea behind the hit Japanese television show “DCU: Deep Crime Unit.”
May 23, 2024
Squabble Over Subpoena In Semiconductor Substrate Patent Row Sent To Texas

BOSTON — A federal magistrate judge in Massachusetts on May 22 did not reach the merits of a motion to quash a subpoena served on a wafer manufacturer, instead transferring the request to the Texas federal court where an infringement action over semiconductor products incorporating the wafers is already under way.
May 22, 2024
DISH Can Amend Patent Complaint; FuboTV Denied Dismissal In Delaware

WILMINGTON, Del. — Litigation over a series of adaptive bitrate streaming patents will proceed in Delaware, a federal judge there ruled May 21, granting a motion by the patent owner and exclusive licensee to amend their complaint to add more than 100 patent claims allegedly infringed by the sports streaming service fuboTV Media Inc.
May 22, 2024
WIPO Warns PTO: Fee Increase For Trademarks Violates Madrid Protocol

ALEXANDRIA, Va. — As the comment period draws to a close on plans by the U.S. Patent and Trademark Office (USPTO) to raise fees in fiscal year 2025 on certain trademark applications, the World Intellectual Property Office (WIPO) has weighed in with a warning that the proposal as written runs afoul of the primary system for international trademark registration.
May 21, 2024
En Banc Court Overrules Rosen-Durling, Endorses Graham For Design Patents

WASHINGTON, D.C. — In a May 21 en banc holding, the Federal Circuit U.S. Court of Appeals said the “same conditions for patentability that apply to utility patents apply to design patents” and declared their decades-old approach to determining design patent obviousness “improperly rigid” and no longer good law.
May 21, 2024
Board Distinguishes Dell Patent Application From AI Example In Revised Guidance

ALEXANDRIA, Va. — An examiner’s determination that a machine learning model for providing improved forecasting of market behavior is unpatentable will not be disturbed, the Patent Trial and Appeal Board said May 20, rejecting reliance by real party-in-interest Dell Products L.P. on a neural network-based example in the U.S. Patent and Trademark Office’s updated guidance on patent eligibility.
May 21, 2024
8th Circuit Affirms Insurer Has Duty To Defend Against Trademark Infringement Suit

ST. LOUIS — The Eighth Circuit U.S. Court of Appeals on May 20 affirmed a lower federal court’s finding that an insurer has a duty to defend its computer networking products reseller insured against an underlying trademark infringement lawsuit, noting that this does not resolve the issue of whether the insurer has a duty to indemnify, which will turn on the resolution of the underlying lawsuit.
May 21, 2024
Divided Panel: ‘Own Time’ Language In Patent Invention Agreement Is Ambiguous

WASHINGTON, D.C. — Findings by a federal judge in California that a 2011 assignment by an inventor to his company of rights to a bandwidth optimization patent was ineffective because of an invention agreement he signed with a former employer more than two decades earlier must be revisited, a divided Federal Circuit U.S. Court of Appeals concluded May 21.
May 21, 2024
With Panel ‘Bound By’ Herbal Brands, ‘Detoxify’ Trademark Cases Reinstated

SAN FRANCISCO — Two online sellers of products that allegedly make an infringing use of the “Detoxify” trademark must defend their actions in court, the Ninth Circuit U.S. Court of Appeals ruled May 20, reversing dismissal of the cases on jurisdiction grounds by two separate California federal judges.
May 20, 2024
Cert Bid By Self-Professed ‘Digital Nomad’ Fails In Trademark Jurisdiction Row

WASHINGTON, D.C. — The U.S. Supreme Court on May 20 revealed that it will not weigh in on a finding by a divided Ninth Circuit U.S. Court of Appeals panel that a California court can exercise jurisdiction over a one-person company that has not operated in the Golden State since 2016.
May 20, 2024
Divided Panel Clarifies Scope Of Recoverable Fees Under Section 285

WASHINGTON, D.C. — Four years after reversing a determination that defendants DISH Network L.L.C. and Sirius XM Radio Inc. (SXM) did not qualify as prevailing parties in a patent infringement action, a divided Federal Circuit U.S. Court of Appeals panel on May 20 affirmed a Delaware federal judge’s finding on remand that DISH and SXM cannot recoup the attorney fees they incurred during a “voluntary” and “parallel” proceeding before the Patent Trial and Appeal Board (PTAB).
May 20, 2024
High Court Won’t Consider Copyright Discovery Rule In Online Photo Use Row

WASHINGTON, D.C. — Hearst Newspapers LLC’s plea that the U.S. Supreme Court settle the application of the atextual discovery rule to the Copyright Act fell on deaf ears, as the high court in its May 20 order list denied the media company’s petition for certiorari in a dispute over its use of a photographer’s copyrighted photographs on the websites of several of its publications.