Intellectual Property

After a break, I am back at the monthly patent litigation reports starting with catching up on some of the backlog. As usual, the NPEs slowed down as the holidays approached. Frequent filers included Aperture Net, Digi Portal, and Social Positioning Input Systems.
As usual, I prepared the report in partnership with and using Docket Navigator and its powerful database.  Docket Navigator is a valuable resource, and the place to go if you want to keep track of new patent litigation filings or want to know what is happening in particular cases, how your judge has historically handled a particular
Continue Reading NOVEMBER 2021 RETAIL PATENT LITIGATION REPORT

Polaris Innovations Limited v. USPTO

Docket No. 2019-1483 (IPR2017-01500), 2019-1484 (IPR2017-00901) (https://cafc.uscourts.gov/opinions-orders/19-1483.OPINION.9-15-2022_2004261.pdf)

PROST, CHEN, STOLL

September 15, 2022

Brief Summary:   Board denial of join request to dismiss IPRs following Arthrex II, claim construction (BRC as pre-Nov. 23, 2018), and invalidity decisions affirmed. Summary:  This decision relates to appeals of two PTAB (“Board”) IPR findings that NVIDIA shows Polaris’ US 6,532,505 and 7,405,993 relating to computer memory unpatentable.  The FC remanded the original decisions based on the Appointments Clause and its Anthrex (FC 2019, “Anthrex I”) decision that was subsequently vacated by SCOTUS (US 2021, “Anthrex II”). Between
Continue Reading Board denial of IPR dismissal after Arthrex II, claim construction, and invalidity decisions affirmed

I originally intended to call this article Challenges For Structuring Interior Design Purchasing Fees and Mark-ups, but felt that might be too alarmist.

Nevertheless, Interior Designers often find it challenging to craft the best structure and find the right way to charge clients for interior design services, as well as related services like purchasing and project management. Whether you plan to start up an interior design business or you are already a seasoned interior designer, having clear terms on charges for art, furniture, finishings, fixtures, and other decorative items (sometimes generally referred to as “FF&E” for convenience), will avoid problems
Continue Reading Ping® by AdlerLaw – Structuring Interior Design Purchasing Fees

When a party seeks to protect a mark that is unregistered, the plaintiff has the burden to establish its entitlement to protection under the Lanham Act due to the “distinctiveness” of the mark. Platinum Home Mortg. Corp. v. Platinum Fin. Grp., Inc., 149 F.3d 722, 727 (7th Cir. 1998).

“The first step in determining whether an unregistered mark or name is entitled to the protection of the trademark laws is to categorize the name according to the nature of the term itself.” Int’l Kennel Club of Chi., Inc. v. Mighty Star, Inc., 846 F.2d 1079, 1085 (7th Cir. 1988). “Marks
Continue Reading Ping® by AdlerLaw A Note On Protecting Descriptive Words

SawStop Holding, LLC vs. USPTO

Docket No. 2021-1537, -2105 (https://cafc.uscourts.gov/opinions-orders/21-1537.OPINION.9-14-2022_2003622.pdf)

NEWMAN, LINN, CHEN

September 14, 2022

Brief Summary:   DC and USPTO decision not to grant patent term adjustments to SawStop’s patents affirmed (type C delay extensions).

Summary:  SawStop appealed DC grant of summary judgment (SJ) to the USPTO for denying SawStop any prosecution-related patent term adjustment (PTA) under the American Inventors Protection Act of 1999 to the term of US 9.552,476 and 9,927,796.  There PTA is based on three categories of prosecution delays:  (A) when the PTO fails in certain specified ways to timely respond to the applicant;
Continue Reading DC and USPTO decisions not to grant patent term adjustments to SawStop’s patents affirmed (type C delay extensions)

INVT SPE LLC v. Int. Trade Commission (ITC), HTC America, Inc. et al. (Intervenor)

Docket No. 2020-1903 (https://cafc.uscourts.gov/opinions-orders/20-1903.OPINION.8-31-2022_1997811.pdf)

NEWMAN, TARANTO, CHEN

August 31, 2022

Brief Summary:   ITC decision finding no infringement of functional computer claims affirmed; decision regarding expired patent dismissed. Summary:  INVT appealed ITC decision finding that HTC et al. did not violate 19 USC section 1337 (section 337) by importation and sale of smartphones, smart watches, and tablets due to failure “to meet the technical prong of the domestic industry requirement of” (ALJ decision not reviewed by the ITC) and non-infringement of five INVT patents, two
Continue Reading ITC decision of non-infringement of functional/capability-type computer claims affirmed; decision as to expired patent found moot

Best Medical Int., Inc. v. Elekta Inc.

Docket No. 2021-2099, -2100 (IPR2020-0070-72) (https://cafc.uscourts.gov/opinions-orders/21-2099.OPINION.8-26-2022_1996028.pdf)

HUGHES, LINN, STOLL

August 26, 2022

Brief Summary:   Board IPR obviousness decisions affirmed, appeal regarding canceled claim dismissed. Summary:  BMI appealed two IPR Board decisions finding the challenged claims of US 6,393,096 directed to methods and apparatus for radiation therapy of tumors based on the Board’s conclusion “that a person having ordinary skill in the art would have had formal computer programming experience” and discounting BMI’s expert testimony.  Two IPR petitions were filed by Varian Medical Systems and two “copycat petitions” were filed by
Continue Reading Board IPR obviousness decisions affirmed, appeal regarding canceled claim dismissed

In Re:  Jeffrey A. Killian

Docket No. 2021-2113 (https://cafc.uscourts.gov/opinions-orders/21-2113.OPINION.8-23-2022_1994643.pdf)

TARANTO, CLEVENGER, CHEN

August 23, 2022

Brief Summary:   Board decision finding claims ineligible under section 101 affirmed. Summary:  Mr. Killian appealed USPTO Board decision affirming the examiner’s rejection of certain claims of US Ser. No. 14/450,042 under 35 USC section 101 (Appeal No. 2020-003680, Feb. 1, 2021).  “The ‘042 application relates to a system and method “for determining eligibility for Social Security Disability Insurance [SSDI] benefits through a computer network” which includes obtaining information “from two sources: (1) a Federal Social Security database; and (2) a State database
Continue Reading Board decision finding ineligibility under section 101 affirmed (abstract idea, generic computer)

by Vivek Jayaram 
In the October 2022-2023 term, the Supreme Court of the United States will hear what will likely be a landmark case on the fair use doctrine involving Andy Warhol, Prince, and a famous rock photographer named Lynn Goldsmith. The case will be heard at a time where the fuzzy parameters of the Copyright Act are challenged frequently by digital apes, virtual handbags, and clever artists (looking at you, MSCHF). In a thriving creator economy, where derivatives often take center stage, receiving clarity from the country’s highest court will hopefully provide artists, brands, and creatives with some guidance
Continue Reading I’ll Be Your Mirror

by Wendy Heilbut &Erica Kerman
Many, if not most, employer-employee relationships in the U.S. are “at-will,” meaning that the employment term is not for a set duration. Either party can end the relationship at any time for any lawful reason or for no reason. It’s a capitalist tradition as old as time!
Conversely, if you enter into an employment contract for a set duration, you, as the employer, may only terminate your employee for “just cause” (or likely pay severance), and your employee can terminate the relationship only by following the notice requirements set out in the contract. 
Regardless of
Continue Reading Suite Talk – Exploring the in’s and out’s, what if’s and but’s of C-Suite matters Crafting Legal Terms of Employment

by Danny O’Neill

With a strong background in music, corporate and general IP law, team member Danny O’Neill has been working closely with our artist and technology clients to find creative solutions to the complex legal issues that arise as a result of working at the intersection of art and Web3. Danny has been lead counsel on matters related to Royal.io, the new streaming platform that sells music rights as limited digital assets and works closely with our founder, Vivek Jayaram, on all aspects of the firm’s NFT and Web3 practice. Here, he gives us a glimpse into the intersection
Continue Reading From Obscurity to Mass Appeal How Music NFTs are Impacting the Creator Economy

Par Pharmaceutical, Inc. et al. v. Eagle Pharmceuticals, Inc.

Docket No. 2021-2342 (https://cafc.uscourts.gov/opinions-orders/21-2342.OPINION.8-18-2022_1993064.pdf)

MOORE, PROST, HUGHES

August 18, 2022

Brief Summary:   DC finding of no infringement under 271(e)(2) affirmed based on Eagle’s ANDA specification to which Eagle is bound, and its denial of DJ affirmed. Summary:  Par appealed DC finding that Eagle’s ANDA regarding Par’s Vasostrict® product (a vasopressin injection product used to treat patients with critically low blood pressure) does not infringe the claims of US 9,744,209 or 9,750,785 under 35 USC section 271(e)(2).  Eagle’s ANDA was filed before the ‘209 and ‘785 patents expired, and
Continue Reading DC decision of no infringement by Eagle’s ANDA specification and denial of DJ affirmed

LSI Corporation and Avago Techs. U.S. Inc. v. Regents of the University of Minnesota

Docket No. 2021-2057 (IPR2017-01068) (https://cafc.uscourts.gov/opinions-orders/21-2057.OPINION.8-11-2022_1990664.pdf)

DYK, REYNA, HUGHES

August 11, 2022

Brief Summary:   Board decision that LSI did not timely raise arguments or show portions of prior art patent relied upon was “by another” affirmed.

Summary:  UMN sued LSI and Avago (“LSI”) for infringement of US 5,859,601 and LSI petitioned the USPTO (“Board”) for IPR of the ‘601 patent naming inventors J. Moon and B. Brickner relating to computer storage devices using maximum transition run (“MTR”) coding.  The Board instituted IPR of claims
Continue Reading Board IPR decision of no anticipation affirmed (untimely arguments, portions of prior art relied upon not “by another”)

Hologic, Inc., et al. v. Minerva Surgical, Inc.

Docket No. 2019-2054, -2081 (https://cafc.uscourts.gov/opinions-orders/19-2054.OPINION.8-11-2022_1990706.pdf)

STOLL, CLEVENGER, WALLACH

August 11, 2022

Brief Summary:   On remand from SCOTUS, assignor estoppel decision affirmed as asserted claim not broader than assigned claim. Summary:  This case is on remand from SCOTUS which vacated the FC’s prior judgment affirming the DC’s grant of summary judgment (SJ) of no invalidity of claim 1 of US 9,095,348 to Hologic based on the doctrine of assignor estoppel, which precludes an assignor from challenging the validity of an assigned patent.  Here, the FC was required to “determine whether claim
Continue Reading Assigned claim not broader than asserted claim, DC assignor estoppel decision affirmed

Stephen Thaler v. Vidal/USPTO

Docket No. 2021-2347 (https://cafc.uscourts.gov/opinions-orders/21-2347.OPINION.8-5-2022_1988142.pdf)

MOORE, TARANTO, STARK

August 5, 2022

Brief Summary:   FC panel affirms ED VA and USPTO findings that only human beings and not computers (i.e., artificial intelligence) can be inventors under the Patent Act.

Summary:  Stephen Thaler appealed USPTO and DC denials of his patent applications “which failed to list any human as an inventor” because “the Patent Act defines ‘inventor’ as limited to natural persons; that is, human beings.”  The ED VA agreed with the USPTO, and Mr. Thaler appealed to the FC.  In the patent applications to a
Continue Reading Artificial intelligence cannot be an inventor under the Patent Act, Fed. Cir. holds

TalexMedical, LLC v. Becon Medical Limited, et al.

Docket No. 2021-2069-70, 2021-2109-10 (IPR2020-0028, -00030) (https://cafc.uscourts.gov/opinions-orders/21-2069.OPINION.7-22-2022_1981627.pdf) (Non-Precedential)

LOURIE, SCHALL, REYNA

July 22, 2022

Brief Summary:   Board IPR obviousness decision vacated-in-part and remanded due to incorrect claim construction. Summary:  TalexMedical appealed two USPTO (“Board”) IPR decisions holding claims 4-7 of US 8,167,942 and claim 16 of US 8,853,277 (both Becon patents) relating to “correcting misshaped ears using a molding device” not unpatentable for obviousness.  Becon cross-appealed decisions of holding claims 1-3 and 9 of the ‘942 patent and claims 1-2 and 9-10 of the ‘277 patent invalid for obviousness. 
Continue Reading Board IPR obviousness decision vacated-in-part and remanded due to incorrect claim construction