IP Law Alert

IP Law Alert

Practical Perspectives on Intellectual Property Legal Developments

Hana Financial, Inc. v. Hana Bank: Tacking Priority of Earlier Trademarks

Posted in Trademark, USPTO

The U.S. Supreme Court does not get to tackle trademark law issues very often. The decision in Hana Financial, Inc. v. Hana Bank, (No. 13-1211; January 21, 2015) is the first pronouncement of the highest Court on trademark matters in more than a decade, and it deals with the issue known as tacking. Trademarks often experience changes in appearance and overall look in the course of many years. These changes can take various forms, such as a modification in lettering style, a rearrangement in the order of words, the dropping of a background design, or the addition of new stylized elements. The tacking doctrine allows a party to claim the earlier priority date of an old mark for a new trademark, if the later involves slight changes over the prior version. The U.S. Supreme Court’s decision in Hana Financial addresses narrowly the question as to whether tacking is a matter of law reserved to a judge, or a matter of fact decided by a jury.

Dispelling some prior concerns, the decision does not attempt to make a broader statement regarding the legal standard behind a likelihood of confusion determination. Justice Sotomayor, affirming the Ninth Circuit’s decision, delivered the opinion of the Supreme Court whether two marks may be tacked to determine priority is a question of fact for the jury.

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Keep Your Eyes Open: Protecting Trademarks Through Active Litigation

Posted in Trademark

Industry-specific trade shows offer manufacturers the opportunity to market their products and keep tabs on trends in their industry. However, these shows also provide an opportunity for manufacturers to identify counterfeit models of its products offered on the market. Bond Manufacturing (“Bond”), which produces outdoor heating units, arrived at the 2013 National Hardware Show in Las Vegas and discovered counterfeit versions of its products being exhibited at a nearby booth. Bond’s president was assisting with setting up the company’s booth when he noticed goods bearing Bond’s trademark at an exhibition booth operated by Bond’s previous business partner, Xiamen Hwaart Composite Material. The counterfeit goods included various products, including patio heaters, fire pits, and fireplaces. Combating counterfeiters is part of the daily routine for manufacturers like Bond, but identifying the sources of counterfeit products is typically challenging in the age of Internet commerce as counterfeiters are rarely bold enough to market their ersatz products out in the open in the light of day, particularly when the counterfeiter is your former business partner.

Bond promptly brought an action in the United States District Court for the District of Nevada captioned Bond Manufacturing Co. v. Xiamen Hwaart Composite Material, Ltd., et al., seeking a preliminary injunction, permanent injunction, and damages. Bond’s complaint alleged that the unauthorized products copied the trade dress, and “appear[ed] to be exact knock-offs of Bond products in every detail, because they were unlawfully made by Bond’s former manufacturer to Bond’s specific, proprietary designs.” The Court ultimately entered an order for seizure of the goods, enjoining the defendants from further selling the goods, and required Bond to post a bond of $3,000.

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Federal Appeals Court Directs FDA to Treat Reissue Patents as Separate and Distinct When Determining Eligibility for Pre-MMA 180-Day Exclusivity

Posted in Pharmaceuticals

In Mylan Pharm., Inc. v. FDA, generic drug manufacturer Mylan Pharmaceuticals, Inc. (“Mylan”) challenged an FDA letter decision describing the agency’s treatment of original and reissue patents as “a single bundle of patent rights” when determining eligibility for 180-day exclusivity under the Hatch Waxman Act (pre-MMA). The United States District Court for the Northern District of West Virginia deferred to the FDA’s interpretation of the statute under step 2 of Chevron U.S.A. Inc. v. Natural Res. Def. Council, Inc..

The Fourth Circuit has recently reversed the district court’s decision, holding that each patent listed in the Orange Book—whether an original or a reissue patent—should be treated by the FDA as distinct when it comes to awarding 180-day exclusivity under the pre-MMA statute.

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USPTO Issues New Guidance on § 101 Subject Matter Eligibility

Posted in Patent, USPTO

On December 16, the United States Patent and Trademark Office issued new interim examination guidance for evaluating subject matter eligibility under 35 U.S.C. § 101. This guidance, entitled the “2014 Interim Guidance on Patent Subject Matter Eligibility” (“Interim Guidance”), was developed in view of the recent Supreme Court decisions in Alice, Myriad, and Mayo. The Interim Guidance supplements the June 25, 2014 Preliminary Examination Instructions that we previously discussed, and supercedes the March 4, 2014 Guidance following Myriad and Mayo.

The Interim Guidance pares down the scope of subject matter that could be found patent ineligible under the March 4 Guidance. For example, the Interim Guidance notes that “the application of the overall analysis is based on the claims directed to judicial exceptions . . . rather than claims merely ‘involving’ an exception.” With regards to claims directed to natural-based products, markedly different characteristics from what exists in nature, can now include functional characteristics, or other non-structural properties. By comparison, the March 4 Guidance indicated that only structural changes would be sufficient to demonstrate a markedly different characteristic. On a whole, therefore, the Interim Guidance is more “patent claim friendly” than the March 4 Guidance.

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Heartburn Relief: AstraZeneca Wins Nexium Antitrust Trial

Posted in Patent

On December 5, 2014, an 11-person jury decided in favor of defendants AstraZeneca PLC and Ranbaxy Laboratories, Inc. in the first pay-for-delay class action trial since the United States Supreme Court in FTC v. Actavis, Inc. opened the door on antitrust suits based on patent settlements. Teva Pharmaceutical Industries, Ltd. was also defending the suit before reaching a settlement shortly before the trial ended. United States District Court Judge William Young of the District of Massachusetts last year permitted certification for the class members, including union health plans and insurance companies, based on an alleged injury of supracompetitive prices for AstraZeneca’s brand name heartburn drug, Nexium®.

During the six week jury trial, the main focus of the arguments centered on the resolution of a lawsuit brought by AstraZeneca against Ranbaxy under the Hatch-Waxman Act regarding Ranbaxy’s Abbreviated New Drug Application (“ANDA”) filed with the Food and Drug Administration (FDA) seeking approval to market a generic version of Nexium®. Ranbaxy was the first generic-drug maker to file an ANDA, but AstraZeneca also brought suits against Teva and Dr. Reddy’s Laboratories, Inc. following receipt of their Paragraph IV certifications stating that they too had filed ANDAs with the FDA seeking approval to launch generic versions of Nexium®. The suits settled with an agreement that AstraZeneca would permit Ranbaxy early market entry on May 2014 – years before the last of the patents covering Nexium® will expire – and the benefit of some exclusivity period. AstraZeneca also settled with Teva and Dr. Reddy’s with license entry onto the market until May 2014, subject to Ranbaxy’s expected 180 day exclusivity period, in return for Teva and Dr. Reddy’s admission that the patents were valid and infringed by their ANDA products. AstraZeneca also forgave the liabilities created by Teva’s at-risk launch of its related generic Prilosec product.

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Lacking A Certain Je Ne Sais Quoi – Federal Circuit Finally Holds Ultramercial’s Patent Does Not Cover Patent Eligible Material

Posted in Patent

On November 12, 2014, the United States Court of Appeals for the Federal Circuit held that Ultramercial, LLC’s patent covering an eleven step process of watching a commercial as a condition of accessing free media content is invalid as covering patent ineligible material. The patent at issue, U.S. Patent No. 7,346,545 (“the ’545 patent”), claimed a method for distributing copyrighted products (such as songs, movies, books) over the Internet where the consumer receives a copyrighted product for free in exchange for viewing an advertisement, and the advertiser pays for the copyrighted content. The Federal Circuit had held the ’545 patent claimed patent eligible subject matter twice before and both times was reversed by the United States Supreme Court. This iteration saw the Federal Circuit uphold the grant of a motion to dismiss claims of infringement by the United States District Court for the Central District of California on the basis of patent-ineligibility.

The Federal Circuit in 2011 applied an expansive view of 35 U.S.C. § 101 and relied, in part, on the restrictions imposed by the complex computer programming required by the ’545 patent claims to hold that, “as a practical application of the general concept of advertising as currency and an improvement to prior art technology, the claimed invention is not so manifestly abstract as to override the statutory language of section 101.” Ultramercial, LLC v. Hulu, LLC, 657 F.3d 1323, 1330 (Fed. Cir. 2011) (“Ultramercial I”) (internal quotation and citation omitted). The Supreme Court vacated that judgment and remanded for further consideration given the decision Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) (holding that, because the natural laws recited in the patent claims are not themselves patentable, the claimed processes are not patentable unless they have additional features).

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Attorneys’ Fees, Costs, and an Enhancement! Oh My!

Posted in Patent

We have previously posted on the judiciary’s attempts to address frivolous and unwarranted suits brought by patent holding, non-practicing entities (“NPEs”). To deter such litigation, courts have the power to award attorneys’ fees and costs to defendants subject to such baseless suits. In an October 23 Opinion and Order in Lumen View Tech., LLC v. Findthebest.com, Inc., District Judge Denise Cote, applying 35 U.S.C. § 285 (“Section 285”), not only awarded the defendant its attorneys’ fees and costs, but also applied an enhancement to the awarded fees.

Lumen View Technology, LLC (“Lumen”), brought suit against Findthebest.com, Inc. (“FTB”) on May 29, 2013 in the Southern District of New York, alleging infringement of U.S. patent no. 8,069,073. The complaint against FTB was one of at least twenty substantially similar patent infringement complaints filed by Lumen against other parties between 2012 to 2013.

On November 22, 2013, the court held that the ‘073 patent claimed an abstract idea that was not patentable under 35 U.S.C. § 101, and was therefore invalid. Lumen appealed the decision to the Federal Circuit. The case was stayed, pending the Supreme Court decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014). Following the Supreme Court’s decision in Alice on June 19, 2014, Lumen voluntarily dismissed its appeal to the Federal Circuit.
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Neither Baritsu Nor the Supreme Court Can Stop Sherlock Holmes from Falling Into the Public Domain

Posted in Copyright

We previously reported on the failed attempts by the Conan Doyle Estate, Ltd., to extend the umbrella of United States copyright protection for Sir Arthur Conan Doyle’s pre-1923 Sherlock Holmes-related works. After suffering a setback at the district court level (N.D. Ill.), the Conan Doyle Estate sought a reversal with the U.S. Court of Appeals for the Seventh Circuit. However, the Estate was again denied, with the Seventh Circuit panel unanimously affirming the lower court decision.

The Conan Doyle Estate, in a final leap, filed a Petition for a Writ of Certiorari with the Supreme Court stepping away from its novel copyright argument that literary characters who undergo continued development in later works should remain under copyright protection until the expiration of the copyright of the last work. Instead, the Estate chose to focus on the question of whether federal courts have jurisdiction to issue declaratory judgments of non-infringement when the accused infringing party has not yet provided a concrete work for comparison with the copyright-protected work.

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Recent Case Reveals Effective Strategy for Responding to NPE Suits

Posted in Patent

A recent decision from the United States District Court of the District of Hawaii reveals an effective strategy for responding to non-practicing entity (NPE) suits and obtaining leverage early on in the litigation. This strategy takes into account the business model of some NPEs to name many (unconnected) industry players in one lawsuit and plead only bare allegations of patent infringement.

NPE Plaintiff Broadband iTV, Inc. named Oceanic Time Warner Cable, LLC, Time Warner Cable, Inc., Time Warner Entertainment Company, LP (“TWC”) and Hawaiian Telecom Inc. (HTI) as defendants in a single complaint, alleging that all four entities infringe U.S. Patent 7,631,336 (“the ‘336 patent”). The ‘336 patent is directed to the delivery of video-on-demand content over the Internet. The defendants took several actions in response to this suit.

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The Honorable Grace K. Obermann to Present at NJIPLA’s ETS Seminar on November 6, 2014

Posted in Licensing, Patent, USPTO

On Thursday, November 6, 2014, The Honorable Grace K. Obermann, Lead Administrative Patent Judge, USPTO, PTAB, will present on practicing before the PTAB at the New Jersey Intellectual Property Law Association’s seminar, “Electronics, Telecom & Software Patent Practice Update.” The seminar will also address topics such as licensing guidance, implications of recent Supreme Court decisions, and damages considerations.

Robert E. Rudnick, Past President of the NJIPLA and a Director in the Gibbons Intellectual Property Department, will discuss the Do’s and Don’t’s of Patent Licensing. Thomas J. Bean, also a Director in the Gibbons Intellectual Property Department, will participate in the discussion on PTAB practice with Judge Obermann. For more information or to register, please see the NJIPLA website.