Look (at the PTAB Factors) Before You Leap Into Your Follow-On IPR Petition

Decision Denying Petitioner’s Requests For Rehearing, General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Nos. Case 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.

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Christmas Comes Early for “Useful Article” Copyright Holder

 

Order Denying Motion and Cross-Motion for Summary Judgment, Jetmax Ltd. v. Big Lots, Inc. et al., 15-cv-9597 (S.D.N.Y. Aug. 28, 2017) (Judge Katherine Forrest)

Tricky questions can arise when a person or company attempts to copyright the decorative aspects of a “useful article” that has some practical, nonartistic function.  The questions become trickier still when the decorative aspects of the article are three-dimensional “sculptural” elements, as opposed to two-dimensional words or images.  Judge Katherine Forrest’s recent order in Jetmax Ltd. v. Big Lots, Inc. et al., pending in the Southern District of New York, addresses whether a plaintiff can copyright the decorative cover on a set of Christmas lights.  Note that the “cover” is the physical housing that surrounds the light bulb. READ MORE

E.D. Texas Magistrate Recommendations Highlight How Patent Marking Requirements Can Apply To Method Claims

Report And Recommendation on Motion for Partial Summary Judgment, Huawei Technologies Co. Ltd, v. T-Mobile US, Inc. et al., E.D. Tex. (September 4, 2017) (Magistrate Judge Roy Payne)

Magistrate Judge Roy Payne’s recent Report and Recommendation in Huawei Technologies Co. Ltd, v. T-Mobile US, Inc. shines a spotlight on potential inconsistencies in Fed. Cir. precedent regarding patent marking, and provides some valuable insight to plaintiffs and defendants who may be involved in litigation over a patent’s method claims. READ MORE

Orrick Antitrust Team Authors Article on Pivotal Decision Involving Worldwide FRAND Licenses

Our colleagues recently published a paper in e-Competitions discussing some of the dangerous implications of worldwide FRAND licenses and the UK High Court of Justice’s decision to enter an injunction in Unwired Planet v. Huawei.  Read the paper here.

Matthew G. Rose, Jay Jurata, Emily Luken, The UK High Court of Justice issues an injunction prohibiting an undertaking from selling wireless telecommunications products in Britain due to its failure to enter into a worldwide patent license (Unwired Planet / Huawei)7 June 2017e-Competitions Bulletin August 2017, Art. N° 84684

Alice Strikes Again: Patent for Biometric Identification and Verification System Invalidated as Directed to a “Well-Known” Idea “Humans Have Always Performed.”

Order Granting Motion to Dismiss, IQS US, Inc. et al. v. Calsoft Labs, Inc., et al., N.D. Ill. (August 18, 2017) (Judge Joan H. Lefkow)

Late last month, we reported on an Order from the Southern District of Texas invalidating identify theft prevention software under Alice as being directed to an abstract idea and lacking a sufficiently inventive concept.  There, Magistrate Judge Palermo found that the idea of preventing identity theft was an idea that has “existed since the dawn of civilization” and compared the claimed invention to the age-old practice of signature comparison and the more recent practice of identification cards.  In a similarly-reasoned order, Judge Lefkow of the Northern District of Illinois recently invalidated a patent for a biometric identification and verification system by finding that the patent claimed the idea of comparing known information about an individual to a second set of information for the purposes of confirming an individual’s identity—a “well-known concept that humans have always performed.” READ MORE

USPTO Maintains Standard for Indefiniteness in Rare Precedential Opinion

Decision on Appeal, Ex parte McAward et al., No. 2015-006416 (P.T.A.B. August 25, 2017) (Judges Linda E. Horner, Annette R. Reimers and Nathan A. Engels)

The Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014), revised the standard for finding a patent indefinite under 35 U.S.C. § 112, ¶ 2 (now 35 U.S.C. § 112(b)).  In the wake of this decision, it was unclear whether the U.S. Patent and Trademark Office (PTO) would change its long-held standard for applying indefiniteness rejections during original patent application examination, based on Nautilus.  The PTO’s Patent Trial and Appeal Board (PTAB) recently issued a rare precedential decision, announcing that the PTO’s examination standard will not change. READ MORE

Details Matter: Two Courts’ Approaches to Personal Jurisdiction and Venue

Report & Recommendation to Deny Motion to Dismiss or Transfer, MyMail, Ltd. v. Yahoo!, Inc., E.D. Tex. (August 17, 2017) (Magistrate Judge Roy Payne)

Order Granting Motion to Dismiss, The Proctor & Gamble Company v. Ranir, LLC, S.D. Ohio (August 17, 2017) (Judge Timothy Black)

As we’ve been reporting, patent venue case law continues to develop on multiple fronts in the aftermath of the Supreme Court’s decision in TC Heartland.  In a pair of decisions discussed below, two jurisdictions—the Eastern District of Texas and the Southern District of Ohio—took contrasting approaches to how a defendant’s response to personal jurisdiction allegations affected the defendant’s ability to challenge venue. READ MORE

Venue After TC Heartland – Attending a trade show or location of CEO’s abode not enough to prove “regular and established place of business”

We have been tracking how district courts have handled venue challenges in a post-TC Heartland[1] world, and have reported changes to some of the more popular patent venues, as well as a continuing split among district courts on whether TC Heartland provides grounds to raise new challenges. Another development we have noticed is the refining by District Courts of the patent venue statute’s phrase “regular and established place of business.” READ MORE

Two Recent Decisions Highlight Divergent Extraterritorial Application of Lanham Act and Copyright Act

The question whether and under what circumstances the Lanham Act and the Copyright Act will be applied to conduct occurring at least partially outside the United States grows increasingly important as the world economy continues to globalize and many manufacturers seek to extend their franchises across borders. Two recent federal court decisions have addressed this issue, underscoring the somewhat anomalous differences in extraterritorial enforcement of trade dress and copyright laws, as well as the ability of plaintiffs to obtain injunctive relief with extraterritorial effect. READ MORE

Don’t Get Boxed In By a Consumer Survey: T.T.A.B. Refuses Trade Dress Protection for Cheerios Yellow

Order Affirming Refusal of Registration, In re General Mills IP Holdings II, LLC, T.T.A.B. (August 22, 2017)

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