PTO released new guidelines relating to AIA trial proceedings: (1) If PTAB institutes a review, trial will proceed on all challenged claims and on all asserted grounds of unpatentability; (2) provides automatic sur-replies; (3) eliminates the presumption that a genuine issue of material fact is viewed in light most favorable to petitioner for deciding institution; (4) forbids filing new evidence with a sur-reply, except for deposition transcripts of cross-exam of any reply witness. The rules do not apply retroactively.
On Dec. 7, 2020, the Federal Circuit held that courts have the authority to compel parties to transfer ownership of foreign patents. SiOnyx LLC v. Hamamatsu Photonics K.K., No. 19-2359 (Fed. Cir. Dec. 7, 2020). In reversing the district court's denial of plaintiff's request for sole ownership of several foreign patents reasoning that evidence establishing plaintiff's right to sole ownership of U.S. patents was equally applicable to the foreign patents because the U.S. patents claimed priority to foreign applications. The Court concluded that no rational basis existed for treating the U.S. and foreign patents differently when determining ownership.
Full text of the opinion is available here.
On Nov. 5, 2020, the Federal Circuit affirmed a lower court's order dismissing the claims against two defendants for improper venue. Valeant Pharm. v. Mylan Pharm., No. 19-2402 (Fed. Cir. Nov. 5, 2020). The Federal Circuit concluded that for venue purposes in ANDA cases, infringement occurs only in districts where actions related to the submission of an ANDA occur and not all locations where future distribution of the generic products is contemplated.
On Oct. 28, 2020, the PTO issued a new examination guide regarding procedures for examining applications for generic.com terms, which are any combination of a generic term and generic top-level domain such as .com, .biz etc. The procedures were updated in light of the Supreme Court's Booking.com decision in June 2020.
U.S. Supreme Court granted cert on Federal Circuit's ruling that PTAB APJs are appointed in violation of the Appointments Clause of Article II. The Appointments Clause requires that "principal officers" in the government be appointed by the President with the advice and consent of the Senate while inferior officers may be appointed by a department head. APJs are appointed by the Secretary of Commerce in consultation with the PTO Director.
The Supreme Court has presented two questions: (1) whether, for purposes of the Appointments Clause, APJs are principal officers who must be appointed by the President with the Senate's advice and consent, or "inferior Officers" whose appointment Congress has permissibly vested in a department head (2) whether, if APJs are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 USC 7513(a) to those judges.
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, an unanimous Supreme Court held that new defenses are not precluded in a trademark action that challenged different conduct and raised different claims. Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc., 590 U.S. __ (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.
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