On July 6, 2020, the Precedential Opinion Panel (POP) issued a decision holding that the Board should not raise its own ground of unpatentability against proposed substitute claims in deciding a motion to amend. Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018-00600 (P.T.A.B. July 6, 2020) (Paper 67). According to the POP, inter partes reviews are adversarial proceedings and the Board relies on the parties to bring the most relevant arguments and evidence to its attention. The Board should raise a ground of unpatentability that a petitioner did not advance, or insufficiently developed, only in the rare circumstances where the adversarial process fails.
On June 30, 2020, the U.S. Supreme Court held that the addition of ".com" to a generic term can create a protectable trademark. Patent and Trademark Office v. Booking.com B.V., 591 U.S. ___ (2020). In affirming the Fourth Circuit's decision, the Court rejected the PTO's "nearly per se rule" that when a generic term is combined with a generic top-level domain the resulting combination is generic. Full text of the opinion is available here.
On June 17, 2020, the Federal Circuit held that the Kessler doctrine barred future infringement suits against customers because an earlier lawsuit was dismissed with prejudice. In re PersonalWeb Technologies LLC, No. 2019-1918 (June 17, 2020).
Full text of opinion is available here.
On May 14, 2020, the U.S. Supreme Court ruled that federal preclusion principles do not bar a defendant from raising a defense it failed to litigate in an earlier suit. Lucky Brand Dungarees, Inc. v. Marcel Fashions Grp., Inc., U.S., 590 U.S. ___ (2020). The Court reversed and remanded the Second Circuit's decision.
Marcel sued Lucky Brand in 2001 alleging that Lucky Brand's use of "Get Lucky" infringed Marcel's trademark. The parties settled and Lucky Brand agreed to stop using the phrase "Get Lucky." In 2005, Lucky Brand sued Marcel for copying its designs and logos and Marcel counterclaimed on Lucky Brand's continued use of "Get Lucky." Lucky Brand argued that Marcel's counterclaims were barred by the settlement agreement. The court permanently enjoined Lucky Brand from copying or imitating "Get Lucky" mark and the jury found in favor of Marcel's counterclaims. In 2011, Marcel sued Lucky Brand for continuing to infringe "Get Lucky" mark but not the "Get Lucky" phrase. Lucky Brand moved to dismiss arguing that Marcel had released its claims in the settlement agreement. Marcel responded that Lucky Brand couldn't invoke the release defense because it failed to pursue that defense in the 2005 action. The District Court granted the motion to dismiss holding that Lucky Brand could assert its release doctrine and the settlement agreement barred Marcel's claims. The Second Circuit vacated the decision concluding that "defense preclusion" barred Lucky Brand from raising it in the 2011 suit.
In a unanimous decision, Justice Sotomayor explained that the Court has never recognized "defense preclusion" as a standalone category of res judicata and that "preclusion of defenses must  satisfy the strictures of issue preclusion or claim preclusion." As the parties agreed that issue preclusion did not apply, Lucky Brand's defense could only be barred under claim preclusion which requires the causes of action to have a "common nucleus of operative facts." While the 2005 action was on Lucky Brand's use of "Get Lucky", the 2011 action alleged Lucky Brand's use of Marcel's other marks containing the word "Lucky" but not the use of "Get Lucky" itself. Further, the conduct in 2011 action occurred after the conclusion of the 2005 action and therefore, did not support claim preclusion.
Full text of the opinion is available here.
1. On May 8, 2020, PTO announced a new Prioritized Examination Pilot Program for small and micro entities without payment of the typical fees associated with other prioritized examination.
2. On May 8, 2020, PTO allowed filing of plant patent applications via EFS.
3. On May 6, 2020, PTO launched a web-based platform to identify patents that may be useful in technologies to combat COVD-19.
4. On May 5, 2020, PTO released a form to assist with making a statement of delay due to COVID-19.
On May 6, 2020, the Federal Circuit issued an order denying Caterpillar's motion to vacate and remand for a new hearing before a differently constituted panel in light of Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). In denying the motion, the court reasoned that the panel members became constitutional prior to issuing the final written decision. Caterpillar Paving Products Inc. v. Wirtgen Am., Inc., No. 2020-1261 (Fed. Cir.). Order available here.
PTAB designated Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (March 20, 2020) as precedential. The order discusses the six factors the PTAB considers in determining whether to exercise its discretion to institute review when there is a related proceeding pending in district court. These include: (1) whether the court granted a stay or evidence exits that one may be granted if proceeding is instituted (2) proximity of the court's trial date to the Board's projected statutory deadline for a final written decision (3) investment in parallel proceeding by the court and the parties (4) overlap between issues raised in the petition and in the parallel proceeding (5) whether the petitioner and the defendant in the parallel proceeding are the same party; and (6) other circumstances that impact the Board's exercise of discretion, including the merits.
The Board also de-designated Oracle Corp. v. Click-to-Call Techs. LP, IPR2013-00312, Paper 26 (Oct. 30, 2013) in view of the Board's Precedential Opinion Panel (POP) decision in GoPro, Inc. v. 360Heros, Inc., IPR2018-01734, Paper 38 (Aug. 23, 2019)
On April 27, 2020, the PTO denied a request by Stephen Thaler to name DABUS, an artificial intelligence (AI) system that "invents", as the sole inventor in a patent application filing. In denying the request, the PTO relied on the statutory text ("whoever invents or discovers...may obtain a patent") and a court decision holding that only natural persons could be inventors under U.S. law.
On November 20, 2019, the USPTO published a new, consolidated edition of the AIA Trial Practice Guide. The updates include--institution of trial after SAS; use of sur-replies in lieu of observations; use of word counts; default protective order; sample scheduling order for derivation proceedings; and how parties may contact the Board to request an initial conference call.
Consolidated Edition is available here.
The U.S, Supreme Court granted certiorari in the copyright case between Oracle and Google over the use of Java in Google's Android OS. Google LLC v. Oracle Am., Inc., No. 18-956 (Nov. 15, 2019) (cert granted). Two questions are presented in this case: (1) Whether copyright protection extends to software interface; and (2) whether the use of software interface in creating a new computer program a fair use.
Oracle sued Google in N.D.Cal. for copyright violations for using 37 packages of Java API in Android OS. Google claimed fair use to allegations of copyright infringement. Jury found Google guilty of infringement but was deadlocked on fair use. Therefore, the district judge ruled that the API packages were not copyrightable. Oracle appealed to the Federal Circuit and the appeals court reversed the district court find that the SSO of Java API packages were copyrightable. Google then filed a writ to the Supreme Court but the Court denied review based on the Solicitor General's views. The case then went back to the district court.
In the second trial, Google won on fair use defense. Oracle then appealed to the Federal Circuit and it once again reversed the district court concluding that Google's use of Java API packages was not fair use. Google then filed a writ and the Supreme Court granted cert.
Disclaimer: The content in this blog is solely for informational purposes and does not constitute legal advice.