The Federal Circuit, sitting en banc, found that the decision of the Patent Trial and Appeal Board (“PTAB”) as to whether a petition for inter partes review (“IPR”) is barred as untimely may indeed be appealed. Wi-Fi One, LLC v. Broadcom Corp., No. 2015-1944 (Fed. Cir. Jan. 8, 2018) (en banc). This overrules the panel in Achates Reference Publishing Inc. v. Apple Inc., 803 F. 3d 652 (Fed. Cir. 2015). READ MORE
With experience in federal court and before the United States Patent and Trademark Office, the Trademark Trial and Appeal Board, and the United States International Trade Commission, Briggs's representative matters include:
- A multi-national trademark dispute regarding the right to use color as a functional feature for orthopedic joint replacement products
- A trademark matter involving the appearance of marks in one of the highest selling video game franchises
- A series of disputes relating to patents that cover a gene conveying herbicide tolerance to crops
- Cases regarding royalty payments under patent licensing agreements
He has also been active in Orrick's pro bono practice, representing clients in copyright and contract issues relating to the production of a documentary film, a trademark matter involving a popular line of children's puppets, and trademark counseling and prosecution before the United States Patent and Trademark Office.
During law school, he was Senior Editor for the Journal of Intellectual Property and Entertainment Law.
Posts by: Briggs Wright
Trademark applicants know the familiar sinking feeling when their clearance search turns up a potentially conflicting mark already on the Principal Register. But the situation is not hopeless, and registrants and applicants seeking to register similar marks are often able to reach an amicable coexistence agreement that allows both sides to use and register their respective marks. However, a recent decision from the Trademark Trial and Appeal Board has shown that, when it comes to a coexistence agreement, the devil may be in the details. READ MORE
Decision Denying Petitioner’s Requests For Rehearing, General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case Nos. IPR2016-01357, 01358, 01359, 01360, 01361 (P.T.A.B. September 6, 2017) (expanded panel)
Last year, the Patent Trial and Appeal Board (“PTAB”) set out seven factors that could be considered in determining whether to grant or deny a subsequent petition for inter partes review (“IPR”) after denial of a previous petition—a so-called “follow-on” petition. Moving forward, IPR participants should pay close attention to how the PTAB applies these factors and whether it adds more.
In September 2015, General Plastic filed two IPR petitions challenging claims in Canon patents. The PTAB denied institution on the merits in March 2016 and subsequently denied General Plastic’s requests for rehearing. Then, in July 2016, General Plastic filed five subsequent petitions, again challenging claims of the same Canon patents. Again, the PTAB denied those petitions.
Trademark portfolio owners have long known the pitfalls in securing trade dress protection for a single color. The Trademark Trial and Appeal Board recently underscored those difficulties in affirming the Trademark Office’s refusal to register the color yellow as trade dress in connection with General Mills’ Cheerios cereal. READ MORE