Manual IP News and Unitary Patent News edited by Arnold & Siedsma
 
Unified Patent Court News edited by Bristows
 
Kluwer Copyright Cases edited by IViR
 
Kluwer Patent Cases edited by Brinkhof
 
IP Law Daily - Selected US Cases edited by CCH
 
Volume 2018 - Issue 14
August 2018
 
 
 

News

 
General Information (4)
 
 
Germany to introduce new law on trade secrets soon
 
In a move to formally adopt the EU Directive 2016/943, Germany will soon introduce a new Trade Secrets Act, the first draft of which was published on 19 April 2018 and it is likely to be passed in December 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 6 Aug 2018
 
Germany Full text
 
 
 
 
 
Spain revises IP fee schedule
 
The Spanish Patent and Trademark Office (SPTO) has recently revised its fee schedule relating to some of the intellectual property related processes, and the new fee schedule came into effect on 5 July 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 6 Aug 2018
 
Spain Full text
 
 
 
 
 
Hague System enters into force in UK
 
The Government of the United Kingdom has ratified the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague System) on 13 March 2018, and accordingly the Hague System has entered into force in the UK on 13 June 2018 through the implementation of the Designs (International Registration of Industrial Designs) Order 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 6 Aug 2018
 
United Kingdom Full text
 
 
 
 
 
Jury can’t determine disgorgement of profits in trade secrets case: U.S. court
 
In a trade secret misappropriation case, the U.S. Court of Appeals for the Federal Circuit (CAFC) has held that, under the Texas common law, a jury does not have the power to determine disgorgement of profits.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 6 Aug 2018
 
United States of America Full text
 
 
 
 
 
Patents/Utility Models (5)
 
 
Bulgaria ratifies Protocol on provisional application UPCA
 
Bulgaria has ratified the Protocol on Provisional Application of the UPC Agreement.

It deposited its instrument of ratification of the Unified Patent Court (UPC) Agreement’s Protocol on Provisional Application (PPA) with the Council’s General Secretariat on 24 July 2018.

The PPA allows various provisions of the UPC Agreement to come into force early, and to complete preparations for the start of the system, such as recruitment of judges.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 6 Aug 2018
 
Bulgaria, European Union Full text
 
 
 
 
 
UPC decisions can be challenged under International Investment Agreements
 
‘Should proceedings before the future UPC not comply with the standards of treatment under an IIA [International Investment Agreement, ed.], which was signed by a Contracting Member State to the Agreement on a Unified Patent Court (UPCA), the investor whose rights under the IIA would be infringed by acts of the UPC could initiate arbitral proceedings on the basis of the IIA against the Contracting Member State.’

This is argued in an article on the Kluwer Patent Blog. ‘If the host state violates its obligations under an IIA, most modern IIAs provide for an investor state dispute settlement (ISDS) mechanism. This allows the foreign investor to sue the host state on the basis of the respective IIA before an international investment tribunal for compensation, without being dependent on the assistance of its home state.’

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 6 Aug 2018
 
European Union Full text
 
 
 
 
 
Practical considerations concerning the UP system
 
The Unitary Patent system has many practical consequences that patent attoneys should consider and be aware of before the system gets off the ground.

This was discussed in a webinar reported on by IP Copy. Factors to consider are ’how do we opt-out, how do we request unitary effect or record what has been opted out? For example, an opt-out request needs to come from/be authorised from the true owner of a patent (Rule 5(a) UPC Rules of Procedure). (…) Working out whether the patent register reflects the true ownership position of your portfolio may not be a trivial concern and is one of the challenges of preparing for the unitary patent system.

For more information please click here.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent NewsDate: 6 Aug 2018
 
European Union Full text
 
 
 
 
 
Bill to abolish AIA and PTAB tabled in U.S. House of Representatives
 
The Restoring American Leadership in Innovation Act of 2018 (H.R. 6264), a Bill that seeks to repeal the America Invents Act (AIA) of 2011, was tabled by Congressman Thomas Massie in the U.S. House of Representatives on 28 June 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 6 Aug 2018
 
United States of America Full text
 
 
 
 
 
IBM gets $82.5M award in patent suit against Groupon
 
On 27 July 2018, the U.S. District Court for the District of Delaware awarded IBM $82.5 million in a patent infringement suit against online voucher website Groupon.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 6 Aug 2018
 
United States of America Full text
 
 
 
 
 
Trademarks (4)
 
 
Argentina publishes new rules for trademark opposition proceedings
 
Aiming to regulate the new trademark opposition system contained in Law 27.444, the Argentinean Patent and Trademark Office (APTO) has published Resolution Nº P-183/2018 in the Official Gazette on 19 July 2018.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 6 Aug 2018
 
Argentina Full text
 
 
 
 
 
Trademark data from Costa Rica, El Salvador, Uruguay now available through TMclass
 
With effect 30 July 2018, the National Directorate of Industrial Property under the Ministry of Industry, Energy and Mining of Uruguay (DNPI), the National Registry Centre of El Salvador (CNR) and the National Registry of the Republic of Costa Rica (RNPCR) have joined the Common Harmonised Database on Classification of Goods and Services, making their trademark classification data available through TMclass.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 6 Aug 2018
 
Costa Rica, El Salvador, Uruguay Full text
 
 
 
 
 
CJEU upholds General Court verdict in Puma trademark case
 
Holding that it is mandatory for the European Union Intellectual Property Office (EUIPO) to take into account its earlier decisions or, if it departs from those decisions, to record explicitly the reasons for doing so, the Court of Justice of the European Union (CJEU) in the Puma trademark battle, European Union Intellectual Property Office v Puma SE (Case C 564/16), upheld the General Court ruling that the Board of Appeal failed to consider evidence placed by Puma before the EUIPO in the earlier proceedings.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 6 Aug 2018
 
European Union Full text
 
 
 
 
 
Uruguay trademark data now available via TMview
 
Effective 30 July 2018, the National Directorate of Industrial Property under the Ministry of Industry, Energy and Mining of Uruguay (DNPI) has made its trademark data available via TMview, an online search tool that allows users to access the databases of all participating trademark offices.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 6 Aug 2018
 
Uruguay Full text
 
 
 
 
 
Industrial Models and Designs (2)
 
 
Canada accedes to Hague System
 
On 16 July 2018, the Government of Canada joined the Geneva (1999) Act of the Hague Agreement Concerning the International Registration of Industrial Designs (the Hague System) by depositing its instrument of accession with the Director General of the World Intellectual Property Organization (WIPO), thus becoming the 55th member of the Geneva Act and 69th member of the Hague Union.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 6 Aug 2018
 
Canada, International Conventions Full text
 
 
 
 
 
Honduras, Uruguay registered designs data now on DesignView
 
Effective 30 July 2018, the National Directorate of Industrial Property under the Ministry of Industry, Energy and Mining of Uruguay (DNPI) and the General Directorate of Intellectual Property of Honduras (DIGEPIH) have integrated their registered designs data into the DesignView search tool, raising the number of intellectual property offices to join DesignView to 67.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP NewsDate: 6 Aug 2018
 
Honduras, Uruguay Full text
 
 
 
 

Cases

 
Copyright (2)
 
 
European Union: Filmspeler, European Court of Justice (ECJ), C-527/15, 26 April 2017
 
According to the CJEU, the concept of ‘communication to the public’ covers the sale of a multimedia player which enables free access to copyright-protected works, without the consent of the copyright holders, via pre-installed add-ons. Acts of temporary reproduction of protected works on such a multimedia player do not satisfy the conditions set out in Article 5(1) and (5) of Directive 2001/29.
 
Author(s): Sophia Urlich
 
Source: Kluwer Copyright CasesDate: 6 Aug 2018
 
European Union Full text Full text as PDF
 
 
 
 
 
USA: Glacier Films (USA), Inc. v. Turchin, United States Court of Appeals, Ninth Circuit, No. 16-35688, 24 July 2018
 
The federal district court in Portland, Oregon, erred in declining to award attorney fees to a film distributor as the prevailing party in a copyright infringement suit against a BitTorrent peer-to-peer network user who had stipulated to judgment of infringement, the U.S. Court of Appeals in San Francisco has ruled. The district court abused its discretion by denying fees without properly analyzing the "Fogerty factors" in deciding whether a fee award was appropriate under Section 505 of the Copyright Act. The court also improperly focused on unfavorable conduct of plaintiffs and their counsel in other BitTorrent cases rather than assessing the particular circumstances of this case (Glacier Films (USA), Inc. v. Turchin, July 24, 2018, McKeown, M.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 6 Aug 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent (21)
 
 
Germany: Kinderbett, Federal Court of Justice of Germany, X ZR 59/16, 27 March 2018
 
The FCJ held that the general suitability of a technical means of the common general knowledge to solve a technical problem can only suffice as a motivation for the skilled person to make use of this technical means if it is directly recognisable for the skilled person that the technical circumstances of the problem make the technical means appear objectively appropriate.
 
Author(s): Volker Tillmann
 
Source: Kluwer Patent CasesDate: 6 Aug 2018
 
Reporter for:
 
Germany Full text Full text as PDF
 
 
 
 
 
Germany: Ultrasonic Transducer, Federal Court of Justice of Germany, X ZR 4/16, 20 March 2018
 
The FCJ confirmed that the cited prior art should, generally, provide concrete suggestions, hints or at least provide other reasons beyond the recognisability of the technical problem to seek the solution to a technical problem in the way as presented in the patent. The decision by the FCJ also confirms that if an attack on patentability based on a public prior use is to be successful, it is critical that the plaintiff makes a conclusive submission, i.e. a submission that commands that the claim is invalid if all the asserted facts are assumed to be true.
 
Author(s): Axel T. Esser, Hoffmann Eitle
 
Source: Kluwer Patent CasesDate: 6 Aug 2018
 
Reporter for: Germany
 
Germany Full text Full text as PDF
 
 
 
 
 
Germany: Risserfassungsvorrichtung, Federal Court of Justice of Germany, X ZR 114/15, 19 September 2017
 
The decision by the FCJ confirms that the starting point for assessing inventive step has to be carefully determined. An overly abstract approach is not allowable. In addition, a concrete motivation for looking at old prior art needs to be identified, especially in rapidly developing fields of technology.
 
Author(s): Roland Schieren, Hoffmann Eitle
 
Source: Kluwer Patent CasesDate: 6 Aug 2018
 
Reporter for: Germany
 
Germany Full text Full text as PDF
 
 
 
 
 
Germany: Feldmausbekämpfung, Federal Court of Justice of Germany, X ZB 18/16, 27 March 2018
 
The Federal Court of Justice held that in utility model registration proceedings, the utility model department must examine whether one of the grounds for refusal listed in Sec. 2 Utility Model Law exists.  Further, the exclusion of utility model protection for methods is in accordance with Article 14.1 and Article 3.1 of the Basic Law.
 
Author(s): Thorsten Bausch, Hoffmann Eitle, Munich
 
Source: Kluwer Patent CasesDate: 6 Aug 2018
 
Germany Full text Full text as PDF
 
 
 
 
 
Germany: Telekommunikationsnetzwerkdienste, Federal Court of Justice of Germany, X ZR 89/15, 16 January 2018
 
Nullity Plaintiff still has a need for legal relief even after expiry of the patent as long as Patentee has not given up claims against customers of Plaintiff. A conventional personal computer with telephone functions does not render obvious to implement one of its features in a mobile phone.
 
Author(s): Dominik Scheible
 
Source: Kluwer Patent CasesDate: 6 Aug 2018
 
Reporter for:
 
Germany Full text Full text as PDF
 
 
 
 
 
United Kingdom: Edwards Lifesciences LLC v Boston Scientific Scimed Inc, High Court of Justice of England and Wales, Chancery Division, Patents Court, [2018] EWHC 664 (Pat), 27 March 2018
 
The Court refused Boston's application for a joint inquiry as to damages and account of profits on the basis that a hybrid trial would add significantly to the costs and time taken by the court in deciding relief.  The issue was not that Boston lacked information, it was that it could not predict the outcome at this stage of the litigation. The Court highlighted that Boston was not the first or the last litigant in such a dilemma, and should simply seek advice and make its election. 
 
Author(s): Sara Moran, Associate Editor for Kluwer Copyright Blog and Landmark EU Copyright Cases
 
Source: Kluwer Patent CasesDate: 6 Aug 2018
 
United Kingdom Full text Full text as PDF
 
 
 
 
 
United Kingdom: Edwards Lifesciences LLC v Boston Scientific Scimed Inc, High Court of Justice of England and Wales, Chancery Division, Patents Court, [2018] EWHC 1256 (Pat), 24 May 2018
 
The Court ordered a twelve month stay of the injunction granted when it found one of Boston’s patents concerning a transcatheter heart valve (THV) valid and infringed by Edwards’ medical device, in order to allow for the re-training of clinicians to use non-infringing THVs. The Court also held that, even after that stay, the injunction should be qualified such that Edwards’ THVs could continue to be used for patients for whom there is no alternative (on condition that clinicians signed a declaration to this effect). 
 
Author(s): Sara Moran, Associate Editor for Kluwer Copyright Blog and Landmark EU Copyright Cases
 
Source: Kluwer Patent CasesDate: 6 Aug 2018
 
United Kingdom Full text
 
 
 
 
 
United Kingdom: Glaxo Group Limited & others v Vectura Limited, Court of Appeal of England and Wales, Civil Division, [2018] EWCA Civ 1496, 28 June 2018
 
The Court of Appeal overturned the Patents Court decision to strike out Glaxo Group’s (GSK’s) claim for an Arrow declaration in proceedings concerning a number of patents relating to dry powder inhaler formulations used in the treatment of respiratory diseases.  The Court of Appeal held that GSK’s claim for an Arrow declaration was sufficiently realistic to be allowed to proceed to trial.
 
Author(s): Sara Moran, Associate Editor for Kluwer Copyright Blog and Landmark EU Copyright Cases
 
Source: Kluwer Patent CasesDate: 6 Aug 2018
 
United Kingdom Full text
 
 
 
 
 
United Kingdom: Regeneron Pharmaceuticals v Kymab, Court of Appeal of England and Wales, Civil Division, [2018] EWCA Civ 671, 28 March 2018
 
The Court of Appeal overturned the Patent Court's finding that Regeneron’s patents (a parent patent and its divisional) to transgenic mice used for the production and study of monoclonal antibodies were invalid for insufficiency, holding that Regeneron’s patent disclosed a principle of general application. It upheld the Patents Court's finding that the patents were infringed by Kymab’s mice strains.
 
Author(s): Sara Moran, Associate Editor for Kluwer Copyright Blog and Landmark EU Copyright Cases
 
Source: Kluwer Patent CasesDate: 6 Aug 2018
 
United Kingdom Full text Full text as PDF
 
 
 
 
 
United Kingdom: Regeneron Pharmaceuticals v Kymab, Court of Appeal of England and Wales, Civil Division, [2018] EWCA Civ 1186, 23 May 2018
 
Following the Court of Appeal's decision that two of Regeneron's patents were valid and infringed, it refused to grant Kymab permission to appeal to the Supreme Court, but held that the injunction against Kymab should be stayed, subject to certain conditions, whilst Kymab applied directly to the Supreme Court for permission to appeal. The Court also gave directions on the scope of orders for delivery up or destruction of infringing goods, disclosure of information on Kymab's infringing products, and costs.
 
Author(s): Sara Moran, Associate Editor for Kluwer Copyright Blog and Landmark EU Copyright Cases
 
Source: Kluwer Patent CasesDate: 6 Aug 2018
 
United Kingdom Full text
 
 
 
 
 
United Kingdom: Glaxo Group Limited & anr v Vectura Limited, High Court of Justice of England and Wales, Chancery Division, Patents Court, [2018] EWHC 375 (Pat), 23 February 2018
 
The Patents Court granted Vectura’s application to strike out Glaxo Group’s (GSK’s) claim for an Arrow declaration in proceedings concerning a number of patents relating to dry powder inhaler formulations used in the treatment of respiratory diseases. The Court was of the view that there would seem to be no prospect of GSK obtaining the claimed relief, relying on the Court's finding in FKB v AbbVie that the mere existence of pending applications is not in itself a valid justification for granting an Arrow declaration.
 
Author(s): Sara Moran, Associate Editor for Kluwer Copyright Blog and Landmark EU Copyright Cases
 
Source: Kluwer Patent CasesDate: 6 Aug 2018
 
United Kingdom Full text
 
 
 
 
 
United Kingdom: Regeneron Pharmaceuticals Inc v Kymab Limited & anr, High Court of Justice of England and Wales, Chancery Division, Patents Court, [2016] EWHC 87 (Pat), 01 February 2016
 
The Patents Court held that two of Regeneron’s patents (a parent patent and its divisional) to transgenic mice used for the production and study of monoclonal antibodies were invalid for insufficiency but, if valid, they would have been infringed by Kymab’s mice strains.
 
Author(s): Sara Moran, Associate Editor for Kluwer Copyright Blog and Landmark EU Copyright Cases
 
Source: Kluwer Patent CasesDate: 6 Aug 2018
 
United Kingdom Full text Full text as PDF
 
 
 
 
 
USA: Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., United States Court of Appeals, Federal Circuit, No. 18-1638, 20 July 2018
 
The Patent Trial and Appeal Board properly determined that inter partes review ("IPR") of several patents related to Allergan’s "Restasis" drug for treating eye conditions was not barred by Allergan’s assignment of the challenged patents to the Saint Regis Mohawk Tribe, the U.S. Court of Appeals for the Federal Circuit has held. The doctrine of tribal immunity cannot be asserted in IPR proceedings because IPR is more like an agency enforcement action than a civil suit brought by a private party. In affirming the Board’s decision denying the Tribe’s motion to terminate the IPRs, the Federal Circuit left for another day whether state sovereign immunity would apply in IPR proceedings (Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc., July 20, 2018, Moore, K.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 6 Aug 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Interval Licensing LLC v. Aol, Inc., United States Court of Appeals, Federal Circuit, No. 16-2502, 20 July 2018
 
Asserted claims 15-18 of Interval Licensing’s patent for presenting two sets of information, in a non-overlapping way, on a computer display screen, were directed to a patent-ineligble abstract idea and did not contain any inventive concept that could transform them into patentable subject matter, the U.S. Court of Appeals for the Federal Circuit has decided. Therefore, the federal district court in Seattle’s ruling that the claims did not recite patent-eligible subject matter was affirmed (Interval Licensing LLC v. Aol, Inc., July 20, 2018, Chen, R.).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 6 Aug 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: ZUP, LLC v. Nash Manufacturing, Inc., United States Court of Appeals, First Circuit, No. 17-1601, 25 July 2018
 
A patent for a water recreational device—a floating board with handles intended to allow any kind of rider regardless of athleticism to achieve a full standing and riding position—asserted by ZUP, LLC ("ZUP") against its competitor Nash Manufacturing, Inc. ("Nash"), was invalid as obvious in light of the prior art, a divided panel of the U.S. Court of Appeals for the Federal Circuit ruled, affirming a district court’s ruling (ZUP, LLC v. Nash Manufacturing, Inc., July 25, 2018, Prost, S.).
 
Author(s): Joseph Arshawsky
 
Source: IP Law Daily - Selected US CasesDate: 6 Aug 2018
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Trustees of Boston University v. Everlight Electronics Co., Ltd., United States Court of Appeals, Federal Circuit, No. 16-2576, 25 July 2018
 
A claim in a Boston University patent for a method of preparing a component of light-emitting diodes (LEDs) is not enabled as a matter of law thus rendering that patent invalid, the U.S. Court of Appeals for the Federal Circuit has decided. A district court’s denial of a motion for judgment as a matter of law brought by three manufacturers of lighting products and the resulting infringement judgment against them was therefore reversed (Trustees of Boston University v. Everlight Electronics Co., Ltd., July 25, 2018, Prost, S.).
 
Author(s): Robert Margolis, CCH
 
Source: IP Law Daily - Selected US CasesDate: 6 Aug 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Vivint, Inc. v. Alarm.com Inc., United States Court of Appeals, Federal Circuit, No. 17-2076, 26 July 2018
 
Vivint’s patent claims that allow a user to remotely control electronic devices located the user’s home are invalid based on obviousness, the U.S. Court of Appeals for the Federal Circuit has held. In affirming the decision by the Patent Trial and Appeal Board, the Federal Circuit concluded that the Board properly construed "terminal identifier" in the patent claim and found that the prior art discloses a terminal identifier that would have been obvious (Vivint, Inc. v. Alarm.com Inc., July 26, 2018, Lourie, A.).
 
Author(s): Brian Craig
 
Source: IP Law Daily - Selected US CasesDate: 6 Aug 2018
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: NantKwest, Inc. v. Iancu, United States Court of Appeals, Federal Circuit, No. 2016-1794, 27 July 2018
 
The Director of the USPTO was not entitled to an award of attorney fees after prevailing in an appeal by patentee NantKwest from an adverse decision by Patent Trial and Appeal Board, the en banc U.S. Court of Appeals for the Federal Circuit has ruled, concluding that the provision in 35 U.S.C. §145 which requires a patent applicant to pay "all expenses of the proceedings" fell short of the American Rule’s stringent standard prohibiting courts from shifting attorney fees from one party to another absent a specific and explicit directive from Congress (NantKwest, Inc. v. Iancu, July 27, 2018, Stoll, K.).
 
Author(s): Pamela C. Maloney, Wolters Kluwer
 
Source: IP Law Daily - Selected Trade Secret CasesDate: 6 Aug 2018
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: GoPro, Inc. v. Contour IP Holding LLC, United States Court of Appeals, Federal Circuit, No. 17-1894, 27 July 2018
 
A catalog featuring video cameras made and sold by GoPro, Inc., was a prior art printed publication with respect to the inventions claimed by two patents challenged by GoPro, the U.S. Court of Appeals for the Federal Circuit has decided. The inventions covered portable digital video cameras with remote control capabilities. The Patent Trial and Appeal Board erred in refusing to consider the catalog as prior art in its consideration of two inter partes reviews brought by GoPro on the ground of obviousness. Because the Board failed to accept the catalog as a printed publication, it did not properly consider the merits of GoPro’s obviousness challenge. The Board’s decision was vacated, and the case was remanded with instructions to reevaluate GoPro’s challenge, considering the catalog as prior art (GoPro, Inc. v. Contour IP Holding LLC, July 27, 2018, Reyna, J.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 6 Aug 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Gordon v. Drape Creative, Inc., United States Court of Appeals, Ninth Circuit, No. 16-56715, 31 July 2018
 
The U.S. Court of Appeals for the Ninth Circuit reversed summary judgment granted in favor of the creator and distributor of greeting cards in a trademark infringement suit that involved the use of popular Internet catchphrases because use of the trademarked phrases may not have been artistically relevant to the greeting cards. Although the greeting cards were expressive works protected under the First Amendment, the appellate court determined that there was a triable issue of fact as to whether the greeting card makers added their own artistic expression to the cards beyond that represented by the trademarked catchphrases (Gordon v. Drape Creative, Inc., July 30, 2018, Bybee, J.).
 
Author(s): George Basharis
 
Source: IP Law Daily - Selected US CasesDate: 6 Aug 2018
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., United States Court of Appeals, Federal Circuit, No. 2017-1265, 31 July 2018
 
The U.S. Court of Appeals for the Federal Circuit has granted BioDelivery Sciences International, Inc.’s motion to remand to the Patent Trial and Appeal Board a consolidated appeal of the Board’s final decisions upholding the patentability of three Aquestive Therapeutics patents for water-soluble drug-dosage films incorporating anti-tacking agents. On remand, the Board was directed to consider in the first instance both non-instituted claims and non-instituted grounds raised by BioDelivery in its petitions seeking inter partes review of the patents in accordance with the Supreme Court’s recent decision in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018)("SAS") (BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., July 31, 2018, per curiam).
 
Author(s): Joseph Arshawsky
 
Source: IP Law Daily - Selected US CasesDate: 6 Aug 2018
 
Reporter for:
 
United States of America Full text Full text as PDF
 
 
 
 
 
Trademark (3)
 
 
USA: Sterling Jewelers, Inc. v. Artistry, Ltd., United States Court of Appeals, Sixth Circuit, No. 17-4132, 24 July 2018
 
Jewelry retailer Sterling Jeweler’s use of the word "Artistry" in connection with diamonds sold at its Kay Jewelers retail stores was not likely to create confusion with a jewelry wholesaler named Artistry, Ltd., the U.S. Court of Appeals in Cincinnati has held, affirming a decision of the federal district court in Akron. Given the parties’ different markets and customers, the weakness of the ARTISTRY mark for jewelry, and the parties’ actual use of their marks in commerce, no reasonable jury could find a likelihood of confusion. The district court did not err in granting Sterling’s summary judgment motion for declaration of noninfringement (Sterling Jewelers, Inc. v. Artistry, Ltd., July 24, 2018, Sutton, J.).
 
Author(s): Thomas Long, CCH
 
Source: IP Law Daily - Selected US CasesDate: 6 Aug 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: OTR Wheel Engineering, Inc. v. West Worldwide Services, Inc., United States Court of Appeals, Ninth Circuit, No. 16-35897, 24 July 2018
 
In an action by an industrial tire manufacturer against a competitor for reverse passing off in violation of the Lanham Act, among other claims, substantial evidence supported a jury’s conclusion that the competitor was liable for reverse passing off because he did not merely copy the plaintiff manufacturer’s intellectual property, but passed it off as his own. In addition, the district court did not err in concluding that fraud on the USPTO must be shown by clear and convincing evidence, and the district court’s conclusion that the defendant competitor failed to establish fraud on the USPTO was affirmed. The district court did not err in denying a new trial on the issue of trade dress validity, and in rejecting a proposed jury instruction for a claim of infringement of an unregistered trade dress (OTR Wheel Engineering, Inc. v. West Worldwide Services, Inc., July 24, 2018, Clifton, R.).
 
Author(s): Peter Reap, CCH
 
Source: IP Law Daily - Selected US CasesDate: 6 Aug 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Excelled Sheepskin & Leather Coat Corp. v. Oregon Brewing Company, United States Court of Appeals, Second Circuit, No. 16-3602, 27 July 2018
 
In a trademark dispute over use of the brand name ROGUE for clothing, the federal district court in New York City erred by ruling on summary judgment that an apparel manufacturer was the rightful owner of the mark for clothing, and that an Oregon brewery was only entitled to sell clothing under the ROGUE Mark as complements to and in promotion of its own brewing business, U.S. Court of Appeals for the Second Circuit has ruled. The brewery’s 20 years of prior use of its mark sufficed to overcome the presumption of validity attached to the clothier’s trademark registrations. The district court also erred in finding that laches bared the brewery’s infringement counterclaims and that no reasonable jury could find that the clothier did not commit fraud on the USPTO when it obtained its registrations (Excelled Sheepskin & Leather Coat Corp. v. Oregon Brewing Company, July 27, 2018, Leval, P.).
 
Author(s): Cheryl Beise, CCH
 
Source: IP Law Daily - Selected US CasesDate: 6 Aug 2018
 
United States of America Full text Full text as PDF
 
 
 
 
 
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