Intellectual Property

Sound View Innovations, LLC v. Hulu, LLC

Docket No. 2021-1998 (https://cafc.uscourts.gov/opinions-orders/21-1998.OPINION.5-11-2022_1950301.pdf)

PROST, MAYER, TARANTO

May 11, 2022

Brief Summary:   DC claim construction affirmed but SJ grant of noninfringement vacated and remanded; exclusion of certain damages testimony affirmed.

Summary:  Sound View appealed DC claim construction of claim 16 of US 6,708,213 relating to multimedia streaming technologies, the DC’s grant of summary judgment (SJ) of noninfringement to Hulu, and the damages rulings.  The disputed “downloading/retrieving limitation” “requires ‘allocating a buffer’ at a helper server ‘to cache’ at least a portion of the [streaming multimedia] SM object”, which the DC held
Continue Reading Claim construction affirmed, Hulu’s SJ grant of noninfringement vacated and remanded; damages testimony exclusion affirmed

Sunoco Partners Marketing & Terminals, L.P. v. U.S. Venture, Inc. et al. (“Venture”)

Docket No. 2020-1640, -1641 (https://cafc.uscourts.gov/opinions-orders/20-1640.OPINION.4-29-2022_1943607.pdf)

PROST, REYNA, STOLL

April 29, 2022

Brief Summary:  DC denial of on-sale bar defense reversed; claim construction affirmed; grant of enhanced damages reversed based on attorney opinion; reasonably royalty affirmed.

Summary: Venture appealed DC’s “(I) rejection of its on-sale-bar defense, (II) determination that it infringed two patents…since held invalid, (III) construction of two claim terms, and (IV) decision to enhance damages” relating to butane-blending systems for production of gasoline    Sunoco cross-appealed regarding the denial of lost-profit damages and the award of
Continue Reading DC denial of on-sale bar defense reversed; claim construction affirmed; grant of enhanced damages reversed based on attorney opinion; reasonably royalty affirmed

Auris Health, Inc. v. Intuitive Surgical Operations, Inc.

Docket No. 2021-1732 (IPR2019-1533) (https://cafc.uscourts.gov/opinions-orders/21-1732.OPINION.4-29-2022_1943629.pdf)

DYK, PROST, REYNA (D)

April 29, 2022

Brief Summary:   IPR finding of no obviousness reversed and remanded as industry skepticism was too general and not specific to the actual combination.

Summary:  Auris appealed PTAB (“Board”) IPR final written decision (FWD) that it did not show the claims of Intuitive’s US 8,142,447 relating to robotic surgery systems unpatentable as obvious.  The Board determined that the asserted prior art (Smith and Faraz) disclose each limitation of the challenged claims, with the only remaining issue was whether
Continue Reading IPR finding of no obviousness reversed as “generic industry skepticism cannot, standing alone, preclude a finding of motivation to combine”

Apple, Inc. v. Zipit Wireless, Inc.

Docket No. 2021-1760 (https://cafc.uscourts.gov/opinions-orders/21-1760.OPINION.4-18-2022_1937645.pdf)

HUGHES, MAYER, STOLL

April 18, 2022

Brief Summary:   DC dismissal of Apple’s DJ action based on a lack of personal jurisdiction reversed and remanded.

Summary:  Apple appealed Northern District (ND) of CA DC dismissal of its request for a declaratory judgment (DJ) of noninfringement against Zipit wireless (a DE corporation with a principal place of business in Greenville, SC) for lack of personal jurisdiction (PJ) (unreasonable based on the nature of Zipit’s communications with Apple in the ND).  The FC panel found the DC erroneously “read our
Continue Reading DC dismissal of Apple’s complaint for lack of personal jurisdiction over Zipit reversed and remanded

A fanciful trademark is the strongest trademark type and, in addition to providing examples below, we define it as one that is “coined” for the purpose of serving as a trademark. Of the four types of trademarks, fanciful trademarks receive the most protection from trademark infringement since:

  • they did not previously exist in connection with the sale of a good or service; and,
  • carry no prior meaning.
  • EXXON is an example of a fanciful trademark because it was created solely to function as a trademark and has no meaning.
    Generally, there are four times of trademarks:

    • Fanciful or Arbitrary
    • Suggestive


    Continue Reading Fanciful Trademark: A Comprehensive Explanation

     
    BY WENDY HEILBUT, PARTNER
    We love getting the call from an emerging company or startup client who is ready to embark on a fundraising round: this step shows growth, proof of concept, and drive toward expansion. Similarly, when we work with a new venture capital fund in its capital raising efforts, we enjoy fantasizing with the fund managers on how they will utilize the new capital to bring about the fund’s thesis or mission. While we relish celebrating these moments, we’ve seen first-hand that unfortunately, minority founders and fund managers historically recoup a disproportionately small amount of private capital
    Continue Reading You’re an Investor! and You’re an Investor! and You’re an Investor! Can We All Be Investors In Private Capital?

    BY MICHELLE BUTLER, SENIOR ASSOCIATE AND SRINIDHI KRISHNAN, INTERN
    Companies have been using giveaways as a promotional tool for decades, but they have become increasingly popular as companies ramp up their digital marketing efforts. Running a giveaway online is much easier than administering a mail-in or in-person sweepstakes, and these online promotions can go a long way in creating hype for your company. It’s no wonder that they’ve become so popular. Companies may want to quickly roll out a social media giveaway campaign after the launch of a product or in a moment when online engagement is particularly high, but,
    Continue Reading High Stakes for Sweepstakes: Considerations for Proper Promotions


     
    BY VICTORIA MINNEMAN, ASSOCIATE
    Can you imagine owning the elusive Birkin bag? Starting at around $10,000, for most people this would be considered out of reach, out of budget—even out of this world—in terms of expense and extravagance.
    As a trademark attorney, I try to teach my daughter as much as I can about brands and the importance of protecting what belongs to the people that create them. We often discuss brand name clothes, shoes, stores and purses. We spend time dreaming of what it would be like to own a wardrobe full of Christian Louboutin’s or Jimmy Choo’s
    Continue Reading The MetaBirkin: To Be or Not to Be


    BY HEIDI YERNBERG PARTNER
    As a law firm, we are ever focused on our words and speech. Through words, lawyers strive to communicate complexity in simple terms, craft winning arguments through persuasive speech, and document business arrangements with precise language. The legal writing process is different from creative writing, certainly, but it requires effort and original thinking. Well-crafted legal language leaves a lasting impact for years to come. Only consider some of the most powerful legal words in our country’s history: “We hold these truths to be self-evident, that all men are created equal…”
    Prose and poetry, though, leave a
    Continue Reading The Power of Words: Playlist for the Apocalypse

    Exploring the in’s and out’s, what if’s, and but’s for C-Suite matters.
    BY ERICA KERMAN, SENIOR ASSOCIATE

    As an early-stage founder or executive, you may be asked for equity by employees, potential hires, advisors and others. Here are some pointers so you feel on top of the game in those conversations.

    1. When and why issue equity in your company?
    Companies will often grant equity to initial hires and contractors who provide key services to the company. There are several reasons why you may grant equity in your company, but two of the most common are:
    • To attract and
    Continue Reading Suite Talk: Equity

    Amgen Inc. et al. v. USPTO (Intervenor)

    Docket No. 2019-2171 (IPR2016-01542) (https://cafc.uscourts.gov/opinions-orders/19-2171.OPINION.4-14-2022_1936036.pdf) (Non-Precedential)

    CHEN, SCHALL, STOLL

    April 14, 2022

    Brief Summary:   Board IPR obviousness decision reversed due to erroneous claim construction (“[a] straightforward reading of the claim language”, “the only conclusion supported by substantial evidence”).

    Summary:  Amgen appealed USPTO Board Final Written Decision (FWD) finding claims 1-124 of US 8,952,138 relating to methods for producing recombinant proteins unpatentable for obviousness that turned on the Board’s claim construction of the term “final thiol-pair ratio”.  The FC panel opinion explains that the ‘138 patent provides methods for avoiding recombinant protein
    Continue Reading Board IPR obviousness decision reversed due to erroneous claim construction

    On Thursday, April 28, 2022 from 12:00 p.m. to 1:15 p.m. CT, the IPLAC’s Copyright Committee is hosting a presentation by musicologist Judith Finell on navigating the relationship between technology, music and copyright law.
    This virtual event is $15 for members and $45 for non-members.  Please register by clicking here.
    Continue Reading Creativity and Copyright: Navigating the Complex Relationship Between Technology, Music & Copyright Law


    How big is the market for non-fungible tokens (NFTs)? In Q4 2021 alone, crypto collectors bought and sold $11 billion worth of NFTs—a figure roughly equivalent to what the entire contemporary art market sold during the same period. But even as the NFT market has exploded, it has also run into a problem familiar to the art and luxury goods markets: counterfeit works. Many experts have said that OpenSea—the Amazon of NFT marketplaces—has conceded that approximately 80% of the works on its platform are not authentic. This is unacceptable and reflects a failure to pass laws that would help protect
    Continue Reading An OpenSea of Fakes


     
    The International Olympic Committee (“IOC”) is the governing body that manages most aspects of the Olympic Games, including the broadcast of any footage from the Olympic Games. In an effort to raise funds, the IOC sells its broadcast rights to various networks and these rights allow the networks to exclusively show the Games on television, radio, the internet, etc. This practice raises billions of dollars for the IOC and that money is, for the most part, allocated to maintaining the committee, as well as the event itself. For context, in 2014, NBC paid $7.75 billion for the rights to
    Continue Reading Copyrights at the Olympics


     
    Fashion as an ‘artform’ and fashion as an ‘industry subject to legal protections’ exist as two somewhat inconsistent concepts. In the artistic context, the garment as worn can be considered secondary to the creative vision of the designer. Pyer Moss’ recent collection comes to mind. Kerby Jean-Raymond, the tour de force designer of the Pyer Moss label, designed the garments in his recent collection to serve as statement art pieces rather than items of clothing to be worn. The collection was a celebration of inventions created by black inventors throughout history and included garments with outlandish embellishments such as
    Continue Reading The Realities (and Art) of Fashion IP

    There are 45 total Trademark Classes, also known as “International Classes” or simply “Classes.” The United States Patent and Trademark Office (“USPTO”) categorizes trademarks by “Classes.” The classification system is critical because trademarks identify a source of goods and/or services that distinguish the trademark from others.

    A video of me explaining the trademark classes.Each trademark must fall into one or more International Class of goods and/or services. In fact, applicants may use the International Class system to see what other marks exist in similar Classes. By checking the Trademark Classes, a trademark owner can reduce the odds of a Likelihood
    Continue Reading Trademark Classes – Complete 45 International Classes List (Video Update)