IP Law Alert

IP Law Alert

Practical Perspectives on Intellectual Property Legal Developments

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.

Depending on the Circumstances, Claim Construction May Be Subject to Clear Error Review on Appeal

Posted in Patent

Traditionally, claim construction, which can be an important phase in patent litigation for setting the metes and bounds of a patent, has been viewed as a pure question of law and subject to de novo review by the Federal Circuit on appeal. This was considered problematic by some because the district court’s findings on claim construction, which the parties had been relying on throughout the litigation, were not given any deference on appeal.

The Supreme Court, in its January 20, 2015 decision in Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015), has reined in this practice and held that a clear error standard may apply when the district court made subsidiary factual findings during claim construction. In Teva, the parties disputed the meaning of the term “molecular weight.” Sandoz argued that the term was susceptible to three different meanings based on the specification and therefore the claim was indefinite. In considering whether the claim was indefinite, the district court heard testimony of experts on what the claim term would mean to one skilled in the art, and eventually determined that the term was sufficiently definite and construed its meaning. The Federal Circuit, applying the de novo standard, reversed this ruling and found that the claim was indefinite, despite the district court’s findings relating to the experts’ testimony. The Supreme Court held that the Federal Circuit erred. The Supreme Court pointed out that Fed. R. Civ. P. 52(a)(6) required the Federal Circuit to review the district court’s findings of fact under a clearly erroneous standard and that the Federal Circuit was required to apply this standard of review because the district court made subsidiary findings of fact. The Supreme Court remanded the case to the Federal Circuit for reconsideration.

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Federal Circuit Issues Its First AIA Appeal Ruling

Posted in Patent, USPTO

On Tuesday, the Federal Circuit issued its first ruling on an appealed Patent Trial and Appeal Board (“PTAB”) decision of an inter partes review (“IPR”).

Cuozzo Speed Technologies (“Cuozzo”) owns U.S. Patent No. 6,778,074 (the “’074 patent”) entitled “Speed Limit Indicator and Method for Displaying Speed and the Relevant Speed Limit.” Garmin International, Inc. and Garmin USA, Inc. (collectively, “Garmin”) petitioned the United States Patent and Trademark Office (“USPTO”) for IPR of claims 10, 14, and 17 of the ’074 patent. The PTAB found the claims to be invalid as obvious.

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USPTO Releases Examples of Patent Eligible Claims Relating to Abstract Ideas

Posted in Patent, USPTO

We previously reported on the United States Patent and Trademark Office’s issuance of new interim examination guidance in December for evaluating subject matter eligibility under 35 U.S.C. § 101. At the time, the USPTO included examples of allowable claims for nature-based products in light of previous Supreme Court rulings in Mayo and Myriad. On Tuesday, January 27, the USPTO followed up by releasing claim examples relating to abstract ideas in response to the Supreme Court’s decision earlier this year in Alice.

These new examples are arranged into one set of four fact patterns with patent claims eligible under Alice, followed by a second set of four fact patterns with claims that were found ineligible in recent Federal Circuit decisions.

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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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