IP Law Alert

IP Law Alert

Practical Perspectives on Intellectual Property Legal Developments

TTAB Rulings May Have Preclusive Effects in District Court Cases

Posted in Trademark, USPTO

In a 7-2 split decision issued on March 24, 2015, the U.S. Supreme Court held that Trademark Trial and Appeal Board (“TTAB”) rulings may have preclusive effects in subsequent federal district court litigation. The Court ruled that so long as the elements of issue preclusion are met, it is irrelevant that the TTAB is not an Article III court.

The decision in B&B Hardware, Inc. v. Hargis Indus., Inc. concluded an 18-year trademark dispute between two fastener manufacturers, B&B Hardware, Inc. (“B&B”) and Hargis Industries, Inc. (“Hargis”). In short, B&B registered the mark SEALTIGHT for its fasteners for the aerospace industry in 1993. Three years later, Hargis applied for federal trademark registration of its product “SEALTITE” for its fasteners for construction industry. B&B opposed Hargis’s attempt to register the mark “SEALTITE.” alleging before the TTAB that the marks were confusingly similar.

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Award of Preliminary Injunction to Declaratory Judgment Defendant in the District of Delaware Offers Cautionary Tale in Opposition Strategy

Posted in Patent

District Court Judge Sue L. Robinson, U.S.D.J., of the United States District Court for the District of Delaware granted a rare preliminary injunction to the declaratory judgment defendant in a patent infringement action, highlighting the importance of presenting infringement arguments under both parties’ claim constructions and expert analysis that supports invalidity. CryoLife Inc. v. C.R. Bard Inc. et al., No. 14-559, Dkt. Entry No. 116, Mem. Order. The injunction bars sales of PerClot Topical, CryoLife’s blood-clotting powder product.

After receiving clearance from the U.S. Food and Drug Administration (“FDA”) to market its product for topical use last spring, CryoLife filed a declaratory judgment action, seeking to invalidate Medafor’s U.S. Patent No. 6,060,461 directed at a method for applying blood-clotting powders, or receive a determination of non-infringement. PerClot Topical was subsequently launched in fall 2014, in competition with Medafor’s product Arista, which was approved by the FDA in 2006.

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Federal Circuit Limits Patent Exhaustion

Posted in Patent

A recent decision by the Federal Circuit, Helferich Patent Licensing LLC v. The New York Times Co., has held that the applicability of the patent exhaustion defense may be limited to a claim-by-claim determination depending on the nature of the licensed rights granted.

In Helferich, the patent owner held rights to a portfolio of patents with claims relating to providing content to wireless handsets and relating to methods for updating content stored on the wireless handsets. Prior to bringing the present litigation, Helferich had licensed handset manufacturers under the patents with the license grants being directed specifically to the handset claims. Subsequently, the patent owner brought suit against The New York Times Company and others asserting infringement of the content claims.

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Potential Delay Enough to Reduce PTA

Posted in Patent, USPTO

The Federal Circuit recently addressed the issue of whether Patent Term Adjustment (“PTA”) can be reduced under 35 U.S.C. § 154(b)(1)(C) by conduct that does not actually cause delay in the conclusion of prosecution. Section 154(b)(1)(C) provides that PTA “shall be reduced by a period equal to the period of time during which the applicant failed to engage in reasonable efforts to conclude prosecution of the application.” The USPTO has interpreted the statute to mean that conduct that did delay or that could potentially delay the examination of a patent applications should be sanctioned. In Gilead Sciences Inc. v. Lee, Gilead Sciences, Inc. (“Gilead”) contested the USPTO’s interpretation and argued that the statue required actual delay in the conclusion of prosecution. The Federal Circuit held that Congress’s intent in enacting the statute was “to sanction not only applicant conduct or behavior that result in actual delay, but also those having the potential to result in delay irrespective of whether such delay actually occurred.”

The timeline of events regarding Gilead’s application for U.S. Patent No. 8,148,374 (the “’374 patent”) is as follows:

  • February 22, 2008 – Gilead filed its application for the ’374 patent;
  • November 18, 2009 – The USPTO issued a restriction requirement;
  • February 18, 2010 – Gilead responded to the restriction requirement;
  • April 16, 2010 – Gilead filed a supplemental information disclosure statement (“IDS”);
  • July 29, 2011 – USPTO issued a notice of allowance;
  • April 3, 2012 – ’374 patent issued.

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Heightened Pleading in Patent Complaints to Frustrate Trolls – Exception for Hatch-Waxman/ANDA Cases

Posted in Patent

All branches of government have worked to decrease frivolous litigation by non-practicing entities (“NPEs”), or patent trolls, in order to both encourage developing technology and allow businesses to utilize that technology without a looming threat of disruptive and costly litigation. In the course of our coverage of these efforts, we have seen state and federal legislative bodies, as well as the United States Patent and Trademark Office (“USPTO”), the executive branch, and the courts, suggesting potential solutions. Congress is currently weighing a revamped version of House Judiciary Committee Chairman Bob Goodlatte’s Innovation Act bill, which seeks to reform patent litigation by focusing on pleading standards.

The pleading standard applicable to patent cases is the same as applied to any other complaint governed under Federal Rule of Civil Procedure 8 (a), requiring merely a short and plain statement for relief with sufficient factual grounds to give rise to a plausible inference that relief will be granted, per Twombly and Iqbal. Only a few special matters must be plead with particularized pleading under Rule 9, e.g., causes of action alleging fraud or mistake. In the patent realm, inequitable conduct allegations must meet this higher standard, because the basis of the allegation is that the patentee conducted a fraud on the USPTO. See Exergen Corp. v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009).

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The United States Deposits Ratification of the 1999 Geneva Act of the Hague Agreement and Becomes a Member Country of the Hague System

Posted in Patent, USPTO

On Friday, February 13, 2015, the United States deposited an instrument of ratification to the 1999 Geneva Act (Geneva Act) of the Hague Agreement Concerning the International Registration of Industrial Designs (Hague Agreement) with the World Intellectual Property Organization (WIPO). With this final step by the United States to become a signatory to the Geneva Act, qualifying U.S. applicants will be able to more easily protect their design patents in member countries and intergovernmental organizations (Contracting Parties) that have also signed on to the Geneva Act.

Specifically, the registration system (the Hague System) allows a qualifying applicant to file a single application, under a single fee structure with up to 100 industrial designs, in order to apply for protection under the laws of any one of the contracting parties designated by the applicant. Examination of the design application remains subject to each designated contracting parties’ rules. As such, notwithstanding the ability to include up to 100 designs on an international application, applicants filing in the United States for a design patent are permitted a single design invention per application, which may include multiple embodiments. Embodiments determined to be unique designs may require divisional applications and consequently, additional filing fees. The United States Patent and Trademark Office’s (USPTO) rules governing the processing and examination of design patents filed under an international application will go into effect on May 13, 2015, and publication in the Federal Register will follow the United States’ ratification to the Geneva Act.

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Court Finds Lack of Standing in Medical Data Breach Case

Posted in Privacy

In Peters v. St. Joseph Servs. Corp., the United States District Court for the Southern District of Texas recently dismissed a class action complaint seeking damages arising out of a data incursion. The Court dismissed the complaint under Federal Rule of Civil Procedure 12(b)(1) for lack of standing without leave to amend, while granting the plaintiff 30 days to raise her state and common law claims in state court.

In Peters, the plaintiff supplied her personally identifiable information (PII) and/or protected health information (PHI) to the defendants when purchasing health care services from them. She sought to certify a class of all Texas residents who were sent a letter or other communication from the defendants notifying them that their PII and/or PHI was maintained on a server accessed by hackers during a three day period in 2013. The plaintiff brought federal statutory claims under the Fair Credit Reporting Act in addition to various state and common law claims including violation of the Texas Medical Practice Act and Hospital Licensing Law.

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Recent Damages Award for Wrongful Seizure Under the Lanham Act

Posted in Trademark

Judge Preska of the United States District Court for the Southern District of New York recently awarded attorneys’ fees, damages, and prejudgment interest on damages, but not fees to defendants, in a trademark counterfeiting case. In Prince of Peace Enterprises, Inc. v. Top Quality Food Market, LLC, Judge Preska adopted in part a report and recommendation of Magistrate Judge Maas, ending an eight-year litigation surrounding ex parte seizures of herbal supplements which took place in 2007.

In Prince of Peace, certain defendants filed a counterclaim under section 34(d)(11) of the Lanham Act for damages incurred from an allegedly wrongful seizure. They claimed that goods seized by the plaintiff were not in fact counterfeit and that the plaintiff lacked standing to pursue federal infringement claims because it did not own the mark at issue. In 2007, the Court vacated the seizure order as to these counterclaimants and in 2011, dismissed the plaintiff’s claims against them for lack of standing.

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In Trademark Infringement Matters, Think Twice Before Waiting. Laches May Run from the Date of the Product Announcement, Before the Initial Sales

Posted in Trademark

Fitbit and Fitbug are makers of activity trackers, which are wearable tracking devices that connect to the internet and provide users with feedback about their fitness, quality of sleep, and other personal metrics.

Fitbug’s U.S. trademark rights to FITBUG date back to 2004, when the British device maker filed an intent to use application with the United States Patent and Trademark Office, which registered in 2009. Fitbug began selling its products in United States commerce since at least as early as 2005. Fitbit, on the other hand, filed a trademark application for FITBIT in August 2008 and announced its product launch the following month. However, Fitbit did not begin shipping its products using the trademark FITBIT until September 2009.

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David E. De Lorenzi – Gibbons IP Department Chair – Named Among Top 25 IP Attorneys Nationwide by General Counsel & Other In-House Counsel

Posted in Intellectual Property

David E. De Lorenzi, Chair of the Intellectual Property Department at Gibbons P.C., has been named among only 25 intellectual property attorneys nationwide by the BTI Consulting Group in its 2015 BTI Client Service All-Stars Report. The newly released report is the comprehensive result of interviews with more than 300 senior legal officers and other executives overseeing the provision of legal services at companies with revenues of $1 billion or more.

The top 25 attorneys were selected based on their innovation and thought leadership, proficiency and talent, and their understanding of their clients’ businesses and needs, as well as value and results. In particular, the ranked IP attorneys were noted for their deep insight into the complex connection between the business, technical, and legal issues their clients face.

“There’s a small but important trend of clients wanting to acquire more IP services from the single firm,” says Michael Rynowecer of BTI. “One thing that stands out about these IP All-Stars is that they seem to have a little bit better understanding of that than most. They’re very good at going back into their firms and putting together a team that fits perfectly for clients.”

Mr. De Lorenzi, who has also been ranked among the world’s leading patent practitioners by Intellectual Asset Management (IAM) for each of the last four years, has 25 years of trial court experience before federal courts nationwide and the International Trade Commission in all fields of intellectual property law, spanning a variety of technologies. The other half of his practice involves counseling clients on their strategic intellectual property development, acquisition, divestiture, and enforcement needs, and negotiating intellectual property transactions that accomplish those business goals. Mr. De Lorenzi’s representative clients are in the life sciences, alternative energy, telecommunications, and consumer products industries.

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