Intellectual Property

NPE activity eased slightly in November, as it usually does toward year end and the holidays.* Frequent filers included Cedar Lane, Digi Portal, Implicit, Noblewood IP, Optinetix, Savannah Licensing, and Tron Holdings.

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 type of motion, or a particular plaintiff’s litigation history. Finally, please
Continue Reading NOVEMBER 2022 RETAIL PATENT LITIGATION REPORT

Weber, Inc. v. Provisur Technologis, Inc.

Docket No. 2022-1751, -1813 (IPR2020-01556, -01557 (https://cafc.uscourts.gov/opinions-orders/22-1751.OPINION.2-8-2024_2267070.pdf)

REYNA, HUGHES, STARK

February 8, 2024

Brief Summary:  Board IPR decisions reversed and vacated for improper determination of public availability of instruction manuals and claim construction determinations.

Summary:   Weber appealed two IPR final written decisions (FWDs) finding that Provisur’s US 10,639,812 and 10,625,436 relating to “high-speed mechanical slicers used in food-processing plants to slice and package food articles, such as meats and cheeses” were shown to be unpatentable for obviousness.  The Board first concluded that “Weber’s operating manuals were not prior art printed publications” because
Continue Reading IPR decisions of no obviousness vacated and remanded for improper public accessibility and claim construction determinations

October was fairly busy. Frequent fliers included Advanced Transactions, Aeritas, AML IP, Bassfield IP, Communication Interface Technologies, Digi Portal, Noblewood IP, and Ridgeview IP.

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 type of motion, or a particular plaintiff’s litigation history. Finally, please let me know if you have thoughts about
Continue Reading OCTOBER 2022 RETAIL PATENT LITIGATION REPORT

Google LLC, et al. v. EcoFactor, Inc.

Docket No. 2022-1750, -1767 (IPR2020-01504, -00792 (https://cafc.uscourts.gov/opinions-orders/22-1750.OPINION.2-7-2024_2266326.pdf))

REYNA, TARANTO, STARK

February 7, 2024

Brief Summary:  Board implicitly construed claims; that construction was improper and led to a finding Google had not shown obviousness; decision vacated and remanded. Summary:   Google appealed from Board IPR final written decision (FWD) finding EcoFactor’s US 8,498,753 relating to thermostat-related systems and methods are not unpatentable.   Google’s IPR alleged obviousness in view of two US patents (Wedekind and Ehlers).  Representative claim 1 includes method steps 1a-1m, including 1m inputs [i]-[v] that are most relevant to this appeal. 
Continue Reading Board’s incorrect implicit claim construction, and finding of no obviousness, vacated and remanded

NPE activity ramped back up in September, as it often does as summer ends and kids go back to school.* Frequent filers included Advanced Transactions, Aeritas, Cedar Lane, Gratuity Solutions, Lexos Media, Optinetix, Push Data, S3G Technology, and Traxcell.

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 type of motion, or
Continue Reading SEPTEMBER 2022 RETAIL PATENT LITIGATION REPORT

In Re:  GO & Associates, LLC

Docket No. 2022-1961 (IPR2020-01524  (https://cafc.uscourts.gov/opinions-orders/22-1961.OPINION.1-22-2024_2256749.pdf)

LOURIE, PROST, REYNA

January 22, 2024

Brief Summary:  Board decision GO’s “EVERYBODY VS RACISM” proposed mark “fails to function as a source identifier” (“not solely because it contains informational matter”) affirmed.

Summary:   GO & Associates, LLC (GO) appealed against the United States Trademark Trial and Appeal Board’s decision, which supported the examining attorney’s refusal to register the mark “EVERYBODY VS RACISM.” This refusal was rooted in the assessment that the mark did not function as a source identifier for GO’s goods and services, such as clothing and
Continue Reading Board decision not to register “EVERYBODY VS RACISM” proposed mark affirmed

Apple, Inc. v. Masimo Corporation

Docket No. 2022-1891 (IPR2020-01524  (https://cafc.uscourts.gov/opinions-orders/22-1891.OPINION.1-12-2024_2252724.pdf) (Non-Precedential)

LOURIE, PROST, REYNA

January 12, 2024

Brief Summary:  Board IPR findings that Apple did not show Masimo’s pulse oximeter claims obvious affirmed. Summary:  Apple appealed USPTO Board holding that it did not show the challenged claims of Masimo’s US 8,457,703 obvious.  The ‘703 claims are directed to a method of managing the power consumption of a pulse oximeter by intermittently changing the duty cycle of the current supplied to the LEDs that light the patient’s tissues.  A prior art patent discloses a pulse oximeter including a “motion
Continue Reading Board IPR findings that Apple did not show Masimo’s pulse oximeter claims obvious affirmed

This month’s issue of Ping® highlights some trends in digital advertising. On June 29th, 2021, Illinois passed a Name, Image, Likeness (NIL) law for their colleges and institutions allowing a student-athlete to earn compensation commensurate with market value while enrolled at a postsecondary educational institution, and obtain and retain a certified agent for any matter or activity relating to such compensation.  This has prompted some discussions around different states treatment of right of publicity laws. This month’s issue of Ping® briefly compares NY and IL NIL laws.

Illinois vs New York Right of Publicity Acts: Key Differences and Protections

A
Continue Reading Ping® by Adlerlaw January 2024 – A Brief Comparison of NY and IL NIL laws.

The United States District Court for the Northern District of Illinois is accepting applications for a full-time United States Magistrate Judge position in the Eastern Division, with the Everett McKinley Dirksen United States Courthouse at Chicago, Illinois as the duty station.

To qualified, an applicant must:

  • be, and have been for at least five years, a member in good standing of the bar of the highest court of a State, the District of Columbia, the Commonwealth of Puerto Rico, or the Virgin Islands of the United States, and have been engaged in the active practice of law for a period


Continue Reading United States District Court, Northern Illinois – United States Magistrate Judge Vacancy Announcement

Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc.

Docket No. 2022-1410, -1554 (IPR2020-01163, -01200  (https://cafc.uscourts.gov/opinions-orders/22-1410.OPINION.1-9-2024_2250463.pdf)

PROST, TARANTO, HUGHES

January 9, 2024

Brief Summary:  Board IPR claim construction of “single biomolecule” as one in the context of the disputed patent and prior art determinations affirmed.

Summary:  PacBio filed two IPR petitions regarding PGI’s US 7,767,441 directed to “an ‘apparatus for identifying a single biomolecule’ as well as methods of using or making that apparatus”.  In one IPR, the USPTO rejected PacBio’s challenge but agreed with PacBio in the other.  Both parties appealed, focused on “the Board’s construction
Continue Reading Board IPR construction of “single biomolecule” as one and prior art determinations affirmed

On January 31, 2024 at 4:30 p.m. the United States District Court for the Northern District of Illinois will host the Grand Opening Ceremony of the Magistrate Judge History Project.

The Opening Ceremony will take place at the Everett McKinley Dirksen Courthouse, Courtroom 1743, 219 South Dearborn Street, Chicago.  A reception will immediately follow.

If you plan to attend, please reply by January 15, 2024 to: https://forms.office.com/g/UmQaJcRXjz

Click here for a copy of the Magistrate Judge History Project Invitation.
Continue Reading Magistrate Judge History Project Invitation

PureCircle USA Inc. et al. v. Sweegen, Inc. et al.

Docket No. 2022-1946 (https://cafc.uscourts.gov/opinions-orders/22-1946.OPINION.1-2-2024_2246968.pdf) (Non-precedential)

DYK, SCHALL, STARK

January 2, 2024

Brief Summary:  DC finding of no WD of genus of enzymes used in method and claim to specific enzyme unpatentable under 101 as it is naturally occurring and specificity limitation is an abstract idea (e.g., “simply states a result”). Summary:  PureCircle appealed DC grant of summary judgment (SJ) to Sweegen, concluding the asserted claims of US 9,243,273 and 10,485,257 are invalid for lack of written description and/or unpatentable under 35 U.S.C. § 101.  The ‘273 and ‘257
Continue Reading DC finding of no WD of enzyme genus and unpatentability under 101 affirmed (naturally occurring, “50% complete” an abstract idea)

K-Fee System GmbH v. Nespresso USA, Inc.

Docket No. 2022-2042 (https://cafc.uscourts.gov/opinions-orders/22-2042.OPINION.12-26-2023_2244064.pdf)

TARANTO, CLEVENGER, STOLL

December 26, 2023

Brief Summary:  DC claim construction and prosecution history estoppel based on European opposition proceeding reversed and remanded (e.g., “too confining”).

Summary:  K-fee appealed DC grant of summary judgment (SJ) that Nespresso’s coffee machine “products did not meet the ‘barcode’ claim limitations” of three patents “under the court’s construction and thus it did not infringe any asserted claims.”  Representative claim 1 of K-fee’s US 10,858,176 includes providing a method of making a coffee beverage using capsule including two barcodes.  The DC “noted
Continue Reading DC claim construction based on European prosecution history reversed and remanded as “too confining”

In 2024, the trademark process timeline to registration can take between twelve to eighteen months at the United States Patent and Trademark Office (“USPTO”). The average time can be found at the USPTO processing time site–as of writing it is 14.7 months. That is why it is crucial to have an experienced trademark attorney file a trademark for you.

Even with the long wait times, the good news is that after registration, trademark protection is retroactive to the filing date. As a result, if you start early, your protection will reach back in time to the date you
Continue Reading How Long Does It Take to Get a Trademark in 2024

In Re:  Institut Pasteur

Docket No. 2022-1896 (https://cafc.uscourts.gov/opinions-orders/22-1896.OPINION.12-13-2023_2237277.pdf) (Non-Precedential)

LOURIE, DYK, TARANTO

December 13, 2023

Brief Summary:  USPTO PTAB decision supporting examiner’s obviousness-type double patenting rejection affirmed.

Summary:  Pasteur appealed PTAB decision examiner’s obviousness-type double patenting rejection of its claims to a method for treating pain using peptides derived from Basic Proline-rich Lacrimal Protein having particular amino acid sequences (Gln-Arg-Phe-Ser-Arg (SEQ ID NO: 2) and Glp-Arg-Phe-Ser-Arg (SEQ ID NO: 55)) at a specified dose (“10-300 mg/day”).  The claims were rejected “on the ground of obviousness-type double patenting over “claims 1, 3, 5, 6, 8, 10, 11 and 14
Continue Reading PTAB/examiner obviousness-type double patenting decision of Pasteur’s peptide dosing claims affirmed

The legal world is buzzing about AI and its use for all kinds of things, including generating logos, text, and other things people would normally want to register for copyright or trademark protection. I’m particularly nerding out over these issues, because my master’s degree project involved training of artificial intelligence systems. Rights to AI-generated content, and to content made on creative platforms, aren’t always easy to understand, and they have a big impact on how you can use it and if and how you can protect it.

There’s no doubt AI is incredibly useful for generating content, though there is
Continue Reading Can You Copyright or Trademark a Logo Designed by AI?