First Denial Based on USPTO’s New Discretionary Denial Factors
Earlier this year, Chief Judge Boalick issued guidance on the USPTO’s recission of “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” explaining how the Fintiv factors should be addressed going forward. Shortly after, Acting Director Stewart issued a memorandum titled “Interim Processes for PTAB Workload Management” that provided additional non-Fintiv discretionary factors that should be assessed to determine whether discretionary denial of an IPR petition is appropriate.
Read MoreA Quest Against Middle-earth: Lord of the Fries Successfully Registers LORD OF THE Mark
The intellectual property rights owner of The Lord of the Rings franchise, Middle-earth Enterprises, LLC (Middle-earth Enterprises) has renewed its pursuit against Lord of the Fries IP Pty Ltd (Lord of the Fries), having recently appealed the Australian Trade Marks Office’s decision allowing the registration of the word mark LORD OF THE filed by Lord of the Fries. We discuss below the key issues in dispute in the trade mark opposition filed by Middle-earth Enterprises.1
Read MoreEstoppel Estopped?
The Federal Circuit recently resolved a split among the district courts whether patent infringement defendants who bring inter partes review (IPR) challenges are estopped from raising new prior art challenges in a co-pending district court litigation. While some district courts had earlier found estoppel to have broad effect, and thus prevent challenges based on products on sale or public use, the Federal Circuit’s decision means that estoppel is limited only to challenges based on patents or printed publications, opening the door to use patents and publications to provide evidence of what subject matter was “on sale” or “in public use.”
Read MoreLast Mile Logistics Comes to the End of the Road – Dei Gratia v Commissioner of Patents [2024] FCA 1145
In Dei Gratia Pty Ltd v Commissioner of Patents [2024] FCA 1145 (Dei Gratia), the Federal Court of Australia dismissed an appeal by Dei Gratia and confirmed the decision of the Commissioner of Patents to refuse the patent application for ‘last mile logistics’. The claimed invention purported to facilitate the delivery of goods from the last point in a distribution chain to end consumers. By selecting a preferred local outlet, customers would be able to overcome delivery issues such as the need to be at home at a specific time and the protection of perishable goods that have been left at doors in high temperatures.
Read MoreBest Method Challenge Continues to Offer “a Material Advantage” – Zoetis Services LLC v Boehringer Ingelheim Animal Health USA Inc [2024] FCAFC 145
Finding against Zoetis, the Full Federal Court held that Zoetis’ three patent applications relating to pig vaccines were invalid due to the failure to disclose the best method.
Read MoreFederal Circuit Broadens ITC Economic Prong
In the recent decision of Lashify, Inc. v. International Trade Commission, the United States Court of Appeals for the Federal Circuit rejected the long-standing approach concerning the interpretation of the domestic-industry requirement under Section 337 of the Tariff Act of 1930. The complainant, an American company importing eyelash extensions from international manufacturers, which alleged that certain other importers were infringing on its patents.
Read MoreWhen Life Gives You Lemons….Thatchers Successful as Court of Appeal Finds Aldi Copycat Products Amount to Trade Mark Infringement in the United Kingdom
On 20 January 2025, the English Court of Appeal handed down its judgment in a highly anticipated appeal by Thatchers Cider Company, concluding that Aldi had infringed Thatchers’ registered trade mark under section 10(3) of the Trade Marks Act 1994, by taking unfair advantage of Thatchers’ packaging trade mark (see comparison below).
The Battle of the Bulls: NBA Fail to Invalidate Pizza Texas Bulls Trade Mark Similar to the Chicago Bulls Logo in the United Kingdom
The National Basketball Association (NBA) has lost the appeal of its invalidation action against a United Kingdom (UK) trade mark filed by Pizza Texas Bulls Inc (Pizza Bulls) in classes 30, 39, and 43 in NBA Properties Inc. v. Pizza Texas Bulls Inc [2023] EWHC 3040 (Ch). Interestingly, the NBA was successful in the European Union (EU) in relation to identical marks under Opposition No B3146352, and prevented the Pizza Bulls mark being registered in the EU.
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