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 2022 - Issue 24
November 2022
 
 
 

News

 
General Information (10)
 
 
Cyprus IPO implements Common Tools Integration tool
 
On 25 October 2022, the Department of Registrar of Companies and Intellectual Property of Cyprus implemented the Common Tools Integration (CTI) tool under the “Major Improvements to TMview and DesignView” project of the European Union Intellectual Property Office.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
Cyprus Full text
 
 
 
 
 
EAPO allows submission of 3D models of inventions, industrial designs
 
On 1 November 2022, the Eurasian Patent Organization (EAPO) started accepting three-dimensional models from applicants submitting patent applications for inventions and industrial designs.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
Eurasia Full text
 
 
 
 
 
EPO updates terms and conditions to use its online services
 
The European Patent Office (EPO) has updated its “Terms and conditions for EPO online services electronic infrastructure.” These provisions replace the “Terms and conditions for EPO smart cards, smart card readers and the Terms for loan and use of OLF software.”
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
European Patent Organization Full text
 
 
 
 
 
EIP and Amar Goussu Staub create ‘UPC Powerhouse’
 
Patent law and litigation firms EIP and Amar Goussu Staub have formed an alliance ‘to support clients in any high-stakes litigation before the new Unified Patent Court (UPC).’

‘EIP Amar (…) brings together highly recognised litigation lawyers and European patent attorneys with a wealth of experience from litigation and European opposition proceedings in English, German and French and across all technical fields.’
 
Author(s): Kluwer IP Reporter
 
Source: Unified Patent Court News Date: 28 Nov 2022
 
European Union, France, Germany Full text
 
 
 
 
 
EUIPO further extends time limit relaxation for users in Ukraine
 
The European Union Intellectual Property Office (EUIPO) has offered further extension of all time limits for its users who reside or have a registered office in Ukraine.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
European Union, Ukraine Full text
 
 
 
 
 
UPC could lead to losing control of patents without action now
 
The new Unified Patent Court (UPC) could lead to UK businesses losing control of their patents across Europe unless they take action now to opt out of the new system.’

That is the focus of an article in the Patent Lawyer Magazine.

The UPC can invalidate patents across up to 24 member states of the Unitary Patent system  in one single ruling, unless the patent is opted out from the UPC’s jurisdiction. This includes patents owned by UK businesses in UPC countries, although the UK is not itself participating.
 
Author(s): Kluwer IP Reporter
 
Source: Unified Patent Court News Date: 28 Nov 2022
 
European Union Full text
 
 
 
 
 
Authentication certificate must to login to UPC’s CMS
 
The Unified Patent Court (UPC) has recently launched its Case Management System (CMS) on its new website and provided more guidance on how to authenticate login process to the CMS.
 
Author(s): Kluwer IP Reporter
 
Source: Unified Patent Court News Date: 28 Nov 2022
 
European Union Full text
 
 
 
 
 
EU Commission begins in-depth investigation into Microsoft-Activision Blizzard deal
 
On 8 November 2022, the European Commission has initiated an in-depth investigation to study whether the proposed acquisition of Activision Blizzard by Microsoft would have a negative impact on the market for personal computer (PC) operating systems.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
European Union Full text
 
 
 
 
 
UK IPO launches consultation on “One IPO”
 
On 3 November 2022, the Government of the United Kingdom sought public opinion on its proposal to update its law on intellectual property services to realize its “One IPO” transformation programme.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
United Kingdom Full text
 
 
 
 
 
USPTO extends deadline on proposed initiatives to ensure reliability of patent rights
 
On 3 November 2022, the United States Patent and Trademark Office (USPTO) issued a notice in the Federal Register extending the deadline to submit views on its notice entitled “Request for Comments on USPTO Initiatives to Ensure the Robustness and Reliability of Patent Rights” to 1 February 2023.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
United States of America Full text
 
 
 
 
 
Patents/Utility Models (10)
 
 
EPO to allow multimedia citations, abolish “10-day rule”
 
On 13 October 2022, the Administrative Council of the European Patent Office (EPO) adopted amendments to EPC rules regarding new requirements for document presentation and the abolition of the 10-day rule.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
European Patent Organization Full text
 
 
 
 
 
More clarification UPC about use CMS
 
The Unified Patent Court has provided more clarification about the requirements of the certificates accepted by the CMS.

To use the CMS, two certificates are needed (provided by one of the Qualified Trust Service Providers – QTSP under the eIDAS regulation): one certificate used for the authentication (required for the login) and one certificate to electronically sign the documents which are uploaded in the CMS.
 
Author(s): Kluwer IP Reporter
 
Source: Unified Patent Court News Date: 28 Nov 2022
 
European Union Full text
 
 
 
 
 
EPO transitional measures Unitary Patent start on 1 January 2023
 
Aligning with the UPC roadmap, the EPO has set the starting date of its transitional measures on 1 January 2023.

‘As of that date, patent applicants may file early requests for unitary effect and requests for a delay in issuing the decision to grant a European patent. The measures are applicable until the entry into operation of the Unitary Patent Protection system which is expected to be on 1 April 2023.’
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent News Date: 28 Nov 2022
 
European Union Full text
 
 
 
 
 
Poland: should it join the Unitary Patent system or stay out?
 
Should Poland stay out or join the Unitary Patent system?

Tomasz Gawliczek and Piotr Godlewski, both patent attorneys at JWP Patent & Trademark Attorneys in Poland have different views and discuss these in the Patent Lawyer Magazine (page 32).

‘It is the number of European patents with unitary effect being granted and in force that will show how big the influence of the new system on local economies is and if it brings more opportunities (by imposing more competition) or more risks (by reducing freedom of activity of SMEs which are less innovative and more of reproducible character)’, Piotr Godlewski says.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent News Date: 28 Nov 2022
 
European Union, Poland Full text
 
 
 
 
 
UPC releases implementation roadmap
 
On 6 October 2022, the preparatory team of the Unified Patent Court (UPC) shared its implementation roadmap for its major activities in the upcoming months.
 
Author(s): Kluwer IP Reporter
 
Source: Unified Patent Court News Date: 28 Nov 2022
 
European Union Full text
 
 
 
 
 
Data exchange agreement EPO and UPC
 
The EPO and the Unified Patent Court (UPC) have signed an agreement on the exchange of data between the EPO’s European Patent Register and the UPC’s Register, as well as for possible operational support from the EPO for the UPC’s training framework.

The agreement will take effect with the entry into operation of the UPC Agreement, which is expected as of 1 April 2023.
 
Author(s): Kluwer IP Reporter
 
Source: Unified Patent Court News Date: 28 Nov 2022
 
European Union, European Patent Organization Full text
 
 
 
 
 
Front-loaded procedures at the UPC
 
The proceedings at the UPC will be relatively front-loaded with written pleadings delving into the detail of the relevant facts and issues.

This is explained in an analysis of Gowling, summarising the key procedures and tools available in the UPC. Gowling has also compiled a comparison with the rules and procedures in Germany, France and the UK.
 
Author(s): Kluwer IP Reporter
 
Source: Unified Patent Court News Date: 28 Nov 2022
 
European Union Full text
 
 
 
 
 
EPO Campinos: Spain will join UP system sooner or later
 
EPO president António Campinos thinks that Spain will join the Unitary Patent system sooner or later.

According to an article in La Vanguardia, he said this at a conference last week in Brussels. During a visit in September to Spain, Campinos tried in vain to convince the government to join. Spain objects to the language regime of the UP system, which doesn’t include Spanish as official language.
 
Author(s): Kluwer IP Reporter
 
Source: Unitary Patent News Date: 28 Nov 2022
 
European Union, Spain Full text
 
 
 
 
 
‘UPC: Corporate capture of European justice system’
 
It is an unheard corruption of justice that Nokia and Airbus got their patent lawyers elected as judges at the Unified Patent Court, according to the Foundation for a Free Information Infrastructure.

FFII president Benjamin Henrion calls for their immediate removal. He points out: ‘In the history of the project, there were rules forbidding this corporate capture of Judges (…)
 
Author(s): Kluwer IP Reporter
 
Source: Unified Patent Court News Date: 28 Nov 2022
 
European Union Full text
 
 
 
 
 
State Farm sues Amazon for patent infringement
 
On 3 November 2022, U.S. Insurance company State Farm filed a patent infringement lawsuit against Amazon.com in the U.S. District Court for the District of Delaware for “willfully” copying its patented technology to launch a rival product.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
United States of America Full text
 
 
 
 
 
Trademarks (5)
 
 
Targovishte becomes Bulgaria’s third certified Authenticity
 
On 2 November 2022, the Bulgarian city of Targovishte joined the subproject called European Network of Authenticities of the European Cooperation Project ECP8.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
Bulgaria Full text
 
 
 
 
 
Madrid Protocol fees revised for Colombia
 
Pursuant to the provisions of the Common Regulations under the Madrid Agreement and Protocol Concerning the International Registration of Marks, the Director General of the World Intellectual Property Organization has revised the amounts of individual fees applicable when Colombia is designated in an international application or in an application for renewal of international registration or is a subject of subsequent designation.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
Colombia Full text
 
 
 
 
 
EUIPO adopts convergence project CP15
 
The European Union Intellectual Property Office (EUIPO) has recently adopted a new convergence project called CP15: Comparison of Goods and Services: Treatment of Terms Lacking Clarity and Precision and Common Interpretation of Canon and Other Criteria.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
European Union Full text
 
 
 
 
 
Kenya to make recordation of IP rights mandatory
 
On 1 January 2023, Kenya will commence enforcing recordals of IP rights for imports, following which Kenyan firms will not be able to import goods whose IP rights have not been recorded with the Kenyan Anti-Counterfeiting Authority (ACA).
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
Kenya Full text
 
 
 
 
 
Revised rules on representatives and renewals under Madrid Protocol comes into force
 
The amendments to Rules 3, 5 and 30 of the Regulations under the Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks entered into force on 1 November 2022.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
World Intellectual Property Organization Full text
 
 
 
 
 
Industrial Models and Designs (3)
 
 
Individual designation fee under Hague Agreement revised for Canada
 
In accordance with the provisions of the Common Regulations under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, the World Intellectual Property Organization has revised the individual designation fees payable when Canada is designated in an international application or in an application for renewal of an international registration.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
Canada Full text
 
 
 
 
 
Egypt adds registered industrial designs database to DESIGNview
 
On 31 October 2022, the Internal Trade Development Authority of Egypt (ITDA) integrated its designs data into the DESIGNview search tool, raising the number of intellectual property offices to join DESIGNview to 76.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
Egypt Full text
 
 
 
 
 
Individual designation fee under Hague Agreement revised for Hungary
 
In accordance with the provisions of the Common Regulations under the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, the World Intellectual Property Organization (WIPO) has established the individual designation fees payable when Hungary is designated in an international application or in an application for renewal of an international registration.
 
Author(s): Kluwer IP Reporter
 
Source: Manual IP News Date: 28 Nov 2022
 
Hungary Full text
 
 
 
 

Cases

 
Copyright (2)
 
 
France: The Mona Lisa in the Playmobil style, Court of Appeal of Paris, n° 20/18194, 30 September 2022
 
An author's freedom of expression must be exercised with respect for the rights of other authors. Any reproduction or representation of an original work without the author's permission constitutes an act of infringment for which compensation must be paid.

The argument that an artist was part of the appropriationist artistic movement was ineffective.
 
Author(s): Brigitte Spiegeler, Heffels Spiegeler Advocaten
 
Source: Kluwer Copyright Cases Date: 28 Nov 2022
 
Reporter for: France
 
France Full text Full text as PDF
 
 
 
 
 
USA: Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., United States Court of Appeals, Ninth Circuit, No. 18-56253, 10 November 2022
 
The long-running case over the scope of the “safe harbor” provision is back at the Ninth Circuit after a remand from the Supreme Court.

A federal district court correctly found that a fabric designer’s mistaken inclusion within a single registration of a series of works that had been made available to different customers on different dates was excusable because the designer did not know that the law prohibited such a combined registration, the U.S. Court of Appeals for the Ninth Circuit has held. The decision by the court of appeals, in a treatise of a decision reached after remand of the case by the Supreme Court, also addressed a wide range of other copyright-related topics including the evidentiary weight given to a foreign copyright registration, the validity of jury findings of willfulness and substantial similarity, and the proper calculation upon remittitur of disgorgement profits (Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., November 10, 2022, Bea, C.).
 
Author(s): Matthew Hersh, Wolters Kluwer Legal & Regulatory US
 
Source: IP Law Daily - Selected US Cases Date: 28 Nov 2022
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
Patent (16)
 
 
EPO: Société des Produits Nestlé S.A. vs Bunge Loders Croklaan B.V., European Patent Office (EPO), Board of Appeal, T 1349/19, 13 September 2022
 
Arguments involving a convoluted set of sequential steps, starting from the claimed subject-matter and working backwards in an attempt to bridge the gap from the prior art, by definition would involve hindsight and thus could not be used to argue lack of inventive step.
 
Author(s): Bart van Wezenbeek, Millipede
 
Source: Kluwer Patent Cases Date: 28 Nov 2022
 
Reporter for: Netherlands
 
European Patent Organization Full text Full text as PDF
 
 
 
 
 
EPO: Swiss Reinsurance Company Ltd., European Patent Office (EPO), Board of Appeal, T 0698/19, 16 September 2022
 
If non-technical features have both a technical and a non-technical effect, the technical effect must be taken into account when assessing inventive step, but the technical effect must be clearly derivable from the application as a whole.
 
Author(s): Bart van Wezenbeek, Millipede
 
Source: Kluwer Patent Cases Date: 28 Nov 2022
 
Reporter for: Netherlands
 
European Patent Organization Full text Full text as PDF
 
 
 
 
 
EPO: Swiss Reinsurance Company Ltd., European Patent Office (EPO), Board of Appeal, T 0524/19, 16 September 2022
 
While a feature might, in certain contexts, be seen as technical, the technical effect of a feature must be assessed as a whole and in the context of the claimed invention.
 
Author(s): Bart van Wezenbeek, Millipede
 
Source: Kluwer Patent Cases Date: 28 Nov 2022
 
Reporter for: Netherlands
 
European Patent Organization Full text Full text as PDF
 
 
 
 
 
Germany: Fugenband, Federal Court of Justice of Germany, X ZR 11/13, 27 October 2015
 
a) In the case of claim limitation by the patent proprietor in nullity proceedings, an examination of the clarity of the limited patent claim is not permissible insofar as the presumed lack of clarity was already contained in the granted claims.

b) If a patent nullity suit is filed by several plaintiffs or if several legal proceedings relating to the same patent have been combined for the purpose of simultaneous hearing and decision, the plaintiffs are necessarily joinders according to § 62 ZPO.
 
Author(s): Dr. Daniel Offenbartl-Stiegert, Hoffmann Eitle
 
Source: Kluwer Patent Cases Date: 28 Nov 2022
 
Reporter for: Germany
 
Germany Full text Full text as PDF
 
 
 
 
 
Germany: Oberflächenbeschichtung, Federal Court of Justice of Germany, X ZR 73/20, 12 April 2022
 
In the case of commercial development or testing activities for which there is a business interest in preventing the resulting knowledge from leaking to the outside, as a rule and in the absence of exceptional circumstances, the availability to the public of the knowledge gained is to be denied. This applies at least as long as the knowledge is only accessible to those persons who are involved in said development and testing activity, but also if manufacturing or  individual manufacturing steps are delegated to third parties.  

Information which does not fall within the definition of a trade secret within the meaning of Sec. 2 No. 1 GeschGehG, shall not necessarily be deemed to be available to the public within the meaning of Sect. 3 Para. 1 Cl. 2 PatG.
 
Author(s): Mr. Sebastian Rennebaum, Hoffmann Eitle
 
Source: Kluwer Patent Cases Date: 28 Nov 2022
 
Reporter for: Germany
 
Germany Full text Full text as PDF
 
 
 
 
 
Germany: Verzichtsurteil, Federal Court of Justice of Germany, X ZR 147/17, 14 December 2021
 
This decision dealt with the practically important question of whether the claim can still be waived in the proceedings on the complaint against denial of leave to appeal, i.e. after the conclusion of the appeal proceedings. This becomes particularly relevant if the patent in suit is held invalid and the opposing party does not agree to a withdrawal of the claim. Here, the Federal Court of Justice has expressly departed from previous case law and allowed the Plaintiff to waive the claim even in proceedings on the complaint against denial of leave to appeal.
 
Author(s): Daniel Graetsch, Krieger Mes & Graf V Der Groeben
 
Source: Kluwer Patent Cases Date: 28 Nov 2022
 
Reporter for: Germany
 
Germany Full text Full text as PDF
 
 
 
 
 
Netherlands: Novartis AG vs. Mylan B.V., Court of Appeal of The Hague, 200.313.064/01, 18 October 2022
 
In the series of preliminary cases in which Novartis tried to obtain an injunction to prohibit Mylan from marketing a generic fingolimod product, the appeal court found a further reason why Novartis’ patent, although having survived an appeal after examination, would be invalid. This decision follows the case law of the boards of appeal of the EPO on the distinction between the requirements of Art. 123(2) and Art. 83 EPC with respect to plausibility.
 
Author(s): Bart van Wezenbeek, Millipede
 
Source: Kluwer Patent Cases Date: 28 Nov 2022
 
Reporter for: Netherlands
 
Netherlands Full text Full text as PDF
 
 
 
 
 
Netherlands: SEaB Power Ltd. vs. The Waste Transformers Nederland B.V., Provisions Judge of the District Court of The Hague, C/09/626449 / KG ZA 22-242C/09/626749 / KG-ZA 22-251, 12 July 2022
 
In the present decision on waste processing and energy production the provisions judge found it a waste of energy to provide evidence for a situation that could not lead to a decision of infringement and a request from SEaB for discovery of such documents was refused.
 
Author(s): Bart van Wezenbeek, Millipede
 
Source: Kluwer Patent Cases Date: 28 Nov 2022
 
Reporter for: Netherlands
 
Netherlands Full text Full text as PDF
 
 
 
 
 
USA: Ottah v. Bracewell LLP, United States Court of Appeals, Federal Circuit, No. 22-1876, 08 November 2022
 
A law firm could not be liable for induced infringement on the part of its client because there was no showing of direct infringement by that client.

A law firm was entitled to dismissal of an induced infringement claim based on its advice to a client, the U.S. Court of Appeals for the Federal Circuit has held. It was not plausibly alleged that the client infringed the asserted patent, and the law firm was not liable for advising its client that it was not necessary to seek a license for a patent that the client’s product clearly did not infringe (Ottah v. Bracewell LLP, November 8, 2022, Lourie, A.).
 
Author(s): Kevin M. Finson, Wolters Kluwer Legal & Regulatory US
 
Source: IP Law Daily - Selected US Cases Date: 28 Nov 2022
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Intel Corp. v. Fortress Investment Group LLC, United States Court of Appeals, Ninth Circuit, No. 21-16817, 08 November 2022
 
Intel merely cited Fortress’s litigation demands as evidence that licensing prices increased.

Intel Corp. failed to sufficiently allege antitrust claims against Fortress Investment Group LLC, held the U.S. Court of Appeals for the Ninth Circuit, affirming dismissal by the federal district court in San Francisco. The court reasoned that Intel focused most of its allegations on how alleged patent aggregation led to increased prices for computer microprocessors but failed to show it actually paid higher royalties as a result of the patent aggregation. Intel also failed to plausibly plead that any price increases were the result of patent aggregation, the court found (Intel Corp. v. Fortress Investment Group LLC, November 8, 2022, Bress, D.).
 
Author(s): Patricia K. Ruiz, Wolters Kluwer Legal & Regulatory US
 
Source: IP Law Daily - Selected US Cases Date: 28 Nov 2022
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: AMP Plus Inc. v. DMF Inc., United States Court of Appeals, Federal Circuit, No. 21-1595, 10 November 2022
 
A manufacturer of recessed light fixtures was entitled to remand of an inter partes review case because the Board failed to state a basis for its decision with regard to one particular claim.

In an inter partes review involving an obviousness challenge of a patent related to a recessed lighting system, the Patent Trial and Appeal Board appeared to have accidentally overlooked arguments regarding one particular claim, according to the U.S. Court of Appeals for the Federal Circuit. While the court largely affirmed the decision, the Board’s silence with regard to one claim required a remand so that a basis for the decision could be provided (AMP Plus Inc. v. DMF Inc., November 10, 2022, Bryson, W.).
 
Author(s): Kevin M. Finson, Wolters Kluwer Legal & Regulatory US
 
Source: IP Law Daily - Selected US Cases Date: 28 Nov 2022
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: American National Manufacturing Inc. v. Sleep Number Corp., United States Court of Appeals, Federal Circuit, No. 21-1321, 14 November 2022
 
The Patent Trial and Appeal Board (PTAB) did not err in granting patent owner’s motion to amended claims in response to a ground of unpatentability; substantial evidence supported determination that some claims were unpatentable as obvious while others were valid.

Bedding manufacturer Sleep Number Corporation was properly allowed to present proposed amended claims in response to a ground of unpatentability of its two patents – directed at a method for adjusting pressure in an air bed - as well as other wording changes unrelated to the inter partes review proceedings, the U.S. Court of Appeals for the Federal Circuit has ruled. Also, there was substantial evidence to support a determination by the Patent Trial and Appeal Board that inter partes review petitioner American National Manufacturing Inc. failed to establish unpatentability for six claims of the two patents but did prove the remaining claims were unpatentable as obvious. Thus, the Board’s two final written decisions were affirmed (American National Manufacturing Inc. v. Sleep Number Corp., November 14, 2022, Stoll, K.).
 
Author(s): Linda O'Brien, Wolters Kluwer Legal & Regulatory US
 
Source: IP Law Daily - Selected US Cases Date: 28 Nov 2022
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Pharmacyclics LLC v. Alvogen, Inc., United States Court of Appeals, Federal Circuit, No. 21-2270, 15 November 2022
 
Substantial evidence supported the district court’s rejection of each invalidity challenge to five asserted claims of four patents.

Following a bench trial, the federal district court in Wilmington, Delaware, properly found that five claims of four patents related to the compound ibrutinib, the active ingredient in Pamacylics’ cancer treatment drug Imbruvica, are not invalid, the U.S. Court of Appeals for the Federal Circuit has decided. The appeals court rejected several invalidity challenges brough by generic drug manufactures Alvogen and Natco Pharma (Pharmacyclics LLC v. Alvogen, Inc., November 15, 2022, Bryson, W.).
 
Author(s): Cheryl Beise, Wolters Kluwer Legal & Regulatory US
 
Source: IP Law Daily - Selected US Cases Date: 28 Nov 2022
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: VLSI Technology LLC v. Intel Corp.,, United States Court of Appeals, Federal Circuit, Nos. 21-1826, 21-1827 & 21-1828, 15 November 2022
 
In construing a key claim term, the Patent Trial and Appeal Board (PTAB) properly disregarded the parties’ agreed construction and a district court’s construction of the same claim term.

The PTAB did not err by adopting a claim construction for the claim term “force region” in an integrated circuit patent different from that adopted by a district court in a related case, the U.S. Court of Appeals for the Federal Circuit has held. The construction adopted by the PTAB was not inconsistent with the court’s construction, but addressed more precisely the issues presented to the Board that had not been before the court. The PTAB also properly disregarded the parties’ agreed construction of “force region” because the agreement arose out of an unknown-at-the-time disagreement about the meaning of one of the other terms used in the construction. The PTAB, however, did err in construing another term found in one claim of the challenged patent (VLSI Technology LLC v. Intel Corp., November 15, 2022, Bryson, B.).
 
Author(s): Kevin M. Finson, Wolters Kluwer Legal & Regulatory US
 
Source: IP Law Daily - Selected US Cases Date: 28 Nov 2022
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: CUPP Cybersecurity LLC v. Trend Micro Inc., United States Court of Appeals, Federal Circuit, Nos. 20-2262, 20-2263 & 20-2264, 16 November 2022
 
Substantial evidence supported the Patent Trial and Appeal Board’s (PTAB) finding that three patents covering security systems and methods for mobile devices were obvious over prior art.

The PTAB properly found three patents covering security measures for mobile devices were obvious in light of the prior art, the U.S. Court of Appeals for the Federal Circuit has held. The Board’s claim construction was consistent with the specification and the obvious determination was supported by expert testimony (CUPP Cybersecurity LLC v. Trend Micro Inc., November 16, 2022, Dyk, T.).
 
Author(s): Kevin M. Finson, Wolters Kluwer Legal & Regulatory US
 
Source: IP Law Daily - Selected US Cases Date: 28 Nov 2022
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Blazer v. Best Bee Brothers LLC, United States Court of Appeals, Federal Circuit, No. 22-1033, 16 November 2022
 
District court erroneously imported limitations from the written description into the construction of the claims themselves.

The U.S. Court of Appeals for the Federal Circuit, finding that a district court gave an “unduly narrow” construction to the phrase “receptacle adapter” in two independent claims in a patent for carpenter bee traps, has vacated the district court’s judgment of noninfringement and remanded the inventor’s infringement lawsuit against Best Bee Brothers, LLC back to the district court for application of the correct construction. The district court improperly imported limitations from the written description (including three embodiments included therein) into the claims (Blazer v. Best Bee Brothers LLC, November 16, 2022, Taranto, R.).
 
Author(s): Robert Margolis, Wolters Kluwer Legal & Regulatory US
 
Source: IP Law Daily - Selected US Cases Date: 28 Nov 2022
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
Trademark (4)
 
 
USA: Metamorfoza D.O.O. v. Big Funny, LLC, United States Court of Appeals, Ninth Circuit, 21-55929, 09 November 2022
 
Because the designs were entirely dissimilar, no likelihood of confusion could exist.

A district court correctly dismissed a trademark infringement suit brought by the Croatian owner of an illusion-themed museum because the design of the allegedly infringing mark was completely dissimilar and the trademark owner had disclaimed the words of its mark, the U.S. Court of Appeals for the Ninth Circuit has held. But the court of appeals, in its unpublished decision, acknowledged—though without resolving—an arguable “tension” between two lines of Ninth Circuit cases as to whether a lack of similarity, on its own, could preclude a likelihood of confusion claim (Metamorfoza D.O.O. v. Big Funny, LLC, November 9, 2022, per curiam).
 
Author(s): Matthew Hersh, Wolters Kluwer Legal & Regulatory US
 
Source: IP Law Daily - Selected US Cases Date: 28 Nov 2022
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: SoClean, Inc. v. Sunset Healthcare Solutions, Inc., United States Court of Appeals, Federal Circuit, No. 21-2311, 09 November 2022
 
Alleged infringer must clearly indicate its brand name in online marketing and sales of replacement filters.

A current competitor and former distributor of a well-known manufacturer of CPAP cleaning devices must continue to clearly indicate the origin of its products in its sales and marketing, the U.S. Court of Appeals for the Federal Circuit has held. SoClean, Inc., had previously brought suit against Sunset Healthcare Solutions, Inc., alleging that Sunset was selling replacement filters that infringed on SoClean’s registered trade dress. The federal district court in Boston issued a preliminary injunction against Sunset, preventing it from selling its products unless it “clearly associate[s] its online marketing and sales…with the Sunset Brand.” Sunset appealed. The Federal Circuit affirmed the preliminary injunction (SoClean, Inc. v. Sunset Healthcare Solutions, Inc., November 9, 2022, Prost, S.).
 
Author(s): Kluwer IP Reporter
 
Source: IP Law Daily - Selected US Cases Date: 28 Nov 2022
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., Ltd., United States Court of Appeals, Ninth Circuit, No. 21-56036, 14 November 2022
 
The suit surrounds a Chinese company’s use of the RIBOLI trademark for kitchen and household items.

In a trademark dispute, the service procedures of Lanham Act Sec. 1051(e)—including allowing service through the USPTO Director on foreign trademark registrants and applicants—apply in court proceedings, held the U.S. Court of Appeals for the Ninth Circuit in precedential interlocutory opinion. The federal district court in Los Angeles erred in concluding that Section 1051(e) procedures only applied to administrative proceedings. The circuit court vacated the district court’s order and remanded for the court to consider entry of default judgment against the Chinese company (San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., Ltd., November 14, 2022, Thomas, H.).
 
Author(s): Patricia K. Ruiz, Wolters Kluwer Legal & Regulatory US
 
Source: IP Law Daily - Selected US Cases Date: 28 Nov 2022
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
USA: Pocket Plus, LLC v. Pike Brands, LLC, United States Court of Appeals, Eighth Circuit, No. 21-3414, 15 November 2022
 
“To grant trade-dress protection for Pocket Plus,” the court said, “would be to hand it a monopoly over the ‘best’ portable-pouch design,” which trademark law precludes.

In a trade-dress infringement suit by portable pouch maker Pocket Plus against its direct competitor Running Buddy, an Iowa district court’s grant of summary judgment to Running Buddy was proper because no genuine dispute existed that Pocket Plus’s trade dress was functional, given that the pouch’s shape and how it was worn could not be considered part of the trade dress, the U.S. Court of Appeals for the Eighth Circuit has ruled. How a product is worn or used is not part of the tangible features of that product. The appellate court also affirmed the lower court’s grant of attorney fees to the defendant Running Buddy, agreeing with the lower court both that this case qualified as an exceptional case under the Lanham Act and that Running Buddy was entitled only to one-fourth of its fee request (Pocket Plus, LLC v. Pike Brands, LLC, November 15, 2022, Gruender, R.).
 
Author(s): Robert B. Barnett Jr., Wolters Kluwer Legal & Regulatory US
 
Source: IP Law Daily - Selected US Cases Date: 28 Nov 2022
 
Reporter for: United States of America
 
United States of America Full text Full text as PDF
 
 
 
 
 
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