IP Law Watch

Legal issues, law and regulations concerning the world of IP.

 

1
A Win is a Win!
2
Don’t B Late; Federal Circuit Interprets the B Delay Calculation
3
Trade mark re-filing and bad faith – Go directly to Jail. Do not pass GO, do not collect $200
4
The Claridge’s Affair: A win, but at what cost?
5
Bronze, Shape, Glow: A copyright tale destined for Broadway
6
IPR of pre-AIA patent not an unconstitutional taking
7
The Scotch Whisky Saga: Where Name and Reputation is not enough
8
Towards a Uniform Theory of Patent Law: The Federal Circuit Declines to Create Design-Patent-Specific Rules for Exhaustion or Repair
9
New USPTO Requirement: U.S. Licensed Attorney Representation for Foreign Trademark Applications and Registrations
10
Second update of PTAB Trial Practice Guide issued

A Win is a Win!

B.E. Technology LLC v. Facebook, Inc., Appeal No. 18-2356 (Fed. Cir. Oct. 9, 2019) identifies what it means to win in a case.  More particularly, the Federal Circuit explained how to determine whether a party is “the prevailing party.”  B.E. Technology (“B.E.”) brought a patent infringement suit in district court against Facebook and the case was stayed pending inter partes review.  The Patent Trial and Appeal Board ultimately held the claims of the patent in question to be unpatentable, which was confirmed on appeal.

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Don’t B Late; Federal Circuit Interprets the B Delay Calculation

Mayo Foundation v. Iancu reads more like an arithmetic problem than a Federal Circuit decision. The reason is the case involves the Patent Term Adjustment Act (PTA) (see 35 U.S.C. § 154(b)). PTA determinations require calculating how many days of delay, from the effective filing date to the Notice of Allowance, are attributable to the applicant and how many to the PTO. Under one PTA scenario, the applicant is entitled to an adjusted term, recovering every day the application is pending beyond three years past the effective filing date for the balance of delay attributable to the PTO. This is called a “B Delay” (§154(b)1)(B)). However, the B Delay is subject to several exclusions. The disputed exclusion in Mayo concerned a Request for Continued Examination (RCE) of the application, which Mayo filed before the PTO declared an interference. 

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Trade mark re-filing and bad faith – Go directly to Jail. Do not pass GO, do not collect $200

Hasbro Inc. (Hasbro), owner of the well-loved board game Monopoly, suffered a defeat on 22 July 2019, before the EUIPO Board of Appeal in relation to the MONOPOLY trade mark. The EU registration for the MONOPOLY trade mark was partially invalidated as it was found that Hasbro had acted in bad faith when filing the application as part of a ‘trade mark re-filing’ programme.

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The Claridge’s Affair: A win, but at what cost?

Claridge’s Hotel Limited (Claridge’s) recently succeeded in challenging in IPEC the use of the CLARIDGE name by Claridge Candles Limited (Claridge Candles) – a small one-person business.

However, the success came at with a cost for the world renowned hotel as in doing so it lost one trade mark registration entirely and had a second mark reduced in scope due to a non-use counterclaim, highlighting one of the risks of instituting trade mark infringement action.

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Bronze, Shape, Glow: A copyright tale destined for Broadway

Stores like Aldi are increasingly popular with UK consumers as a result of offering “copycat” products of well-known brands at drastically lower prices. However, with this rise in popularity, brand owners and creatives are being increasingly frustrated by finding their products and ideas at the mercy of imitation products.

One such aggrieved party was well known makeup brand Charlotte Tilbury (Tilbury), who found their “Starburst” lid design and the “Powder Design” of their “Filmstar Bronze and Glow” set had provided the ‘inspiration’ for Aldi’s own “Broadway Shape and Glow” set. Tilbury filled a UK High Court claim for copyright infringement over the products shown below, with Aldi adamantly rejecting that any copyright had been infringed in their ‘inspired’ makeup set.

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IPR of pre-AIA patent not an unconstitutional taking

In a notable, albeit not surprising, U.S. Federal Circuit decision today, the panel in Celgene Corp. v. Peter confirmed that an inter partes review finding of unpatentability of a pre-AIA patent is not an unconstitutional taking. (slip op. 2018-1171 (July 30, 2019)).

Noting an opening in the recent Supreme Court decision in Oil States, the Federal Circuit deemed the circumstances exceptional as their basis for review of an issue not before the PTAB in the underlying proceeding. The panel reasoned that the proceeding being “curative” in nature, and the approximately forty year period of time in which PTAB proceedings have existed subjecting granted patents to potential cancellations for that duration weighted against any unconstitutionality.

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The Scotch Whisky Saga: Where Name and Reputation is not enough

William Grant & Sons, the distiller, blender and owner of Glenfiddich, the independent whisky company which markets itself as the “World’s Most Awarded Single Malt Scotch Whisky”, was unsuccessful in its recent opposition of Glenfield’s label trade mark application.

Back in 2018, Mumbai-based business man Vivek Anasane filed a trade mark application for the label of his ‘Glenfield’ Scotch whisky in an attempt to expand his drinks company into the UK. This was quickly opposed by William Grant & Sons who argued that the Glenfield mark was “visually and phonetically highly similar” to the Glenfiddich word mark.

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Towards a Uniform Theory of Patent Law: The Federal Circuit Declines to Create Design-Patent-Specific Rules for Exhaustion or Repair

On Tuesday July 23, 2019, the Federal Circuit declined to fashion design-patent-specific doctrines of exhaustion or repair. Automotive Body Parts Ass’n v. Ford Global Techs., LLC, Case No. 2018-1613, slip op. at 2 (Fed. Cir. July 23, 2019).

Instead, the court reemphasized that the same rules apply to utility patents and to design patents unless otherwise provided by law. Id. Also concluding that “aesthetic appeal” is not functional, the court affirmed the district court’s grant of summary judgment in Ford’s favor. Id. The decision is notable for its widening of the gap between trade dress and design patents and for its reaffirmation of the principle that design patents and utility patents should, whenever possible, receive identical treatment under the law.

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New USPTO Requirement: U.S. Licensed Attorney Representation for Foreign Trademark Applications and Registrations

On Tuesday July 2, 2019, the United States Patent and Trademark Office (USPTO) issued new Rules and Regulations under Title 37 of the Code of Federal Regulations (CFR) Parts 2, 7, and 11. They take effect on Saturday August 3, 2019.

The impact of the rule, as implemented, is a new requirement for a licensed U.S. attorney to serve as counsel for applicants, registrants, or parties to a trademark proceeding whose domicile is not located within the United States (i.e. foreign applicants, registrants, or parties). Previously, a substantial number of such trademark applications had been filed without a U.S. attorney by applicants domiciled in other jurisdictions.

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Second update of PTAB Trial Practice Guide issued

The Patent Trial and Appeal Board (PTAB) issued a second update to its Trial Practice Guide, clarifying a number of logistical matters for practitioners and outlining the PTAB’s expectations and preferences for certain stages of the trial process.

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