- Posts by Joshua RudawitzAssociate
Joshua I. Rudawitz is an associate in Nutter’s Intellectual Property Department. He focuses his practice on all aspects of patent law, drawing on his mechanical engineering background and love of technology. Josh is a regular ...
The Court of Appeals for the Federal Circuit revisited the often unclear question of subject matter eligibility under 35 U.S.C. § 101 in Visual Memory LLC. v. Nvidia Corp. In the 2-1 decision, the Federal Circuit reversed the district court’s determination that the claims at issue were directed to an abstract idea.
Recently the Ninth Circuit ruled that Google’s trademark for search engines has not become generic and is still enforceable as to search engines. As Bayer learned with its previously-existing trademark aspirin, when a court determines a trademark to be generic, the mark is no longer protectable. In effect, a generic (no longer a) trademark is re-appropriated by the public such that the mark is no longer a source-identifier for the related goods and services. A generic (no longer a) trademark tells the public what the good and services are rather than who makes and/or sells the goods or services. Additional examples of trademarks that courts held to be generic include cellophane, thermos, and trampoline.
Imagine you’re a fashion designer with a unique clothing design. As with any other business, you wish to protect your intellectual property through the standard combination of patents, trademarks, and copyrights. Sounds simple, right?
Wrong! There is no one-stop shop for protecting your intellectual property and, until recently, the law was not completely on your side. Though a single garment may be the result of a single creative process by a designer, multiple mechanisms may be needed to protect the design of that garment. One of those mechanisms—copyright law—historically has presented a significant hurdle to protecting fashion designs. The Supreme Court, however, recently clarified and expanded how copyright law can be leveraged to protect designs, often quickly and relatively inexpensively.
Below is a high-level overview of the various legal forms of protection for the fashion industry and what those legal mechanisms cover.
Last month the United States Patent and Trademark Office ("the Office") announced its cooperation in a Department of Justice investigation into a trademark scam perpetrated by two California men that defrauded about 4,446 people of $1.66 million. Trademark scams have been steadily on the rise over the past few years, which we have previously written about here. The current investigation resulted in the arrest of Artashes Darbinyan and Orbel Hakobyan, both of Glendale, CA, and their guilty pleas to charges of mail fraud and money laundering.
An old adage states that an infinite number of monkeys typing for an infinite amount of time will surely produce Shakespeare’s Hamlet. In a similar vein, the web site All Prior Art seeks to use computers and algorithms to create prior art. All Prior Art uses the existing U.S. patent database as source materials to create new “prior art.” The web site then publishes these new ideas under the Create Commons License, meaning the ideas are effectively dedicated to the public. While the algorithm is able to generate approximately 36,000 ideas a minute, the overwhelming majority are pure gibberish.
Recently the Patent Trial and Appeal Board (PTAB) invalidated three patents held by Audatex North America, Inc. finding that the claims are not subject matter eligible under 35 U.S.C. §101 in view of the Supreme Court’s decision in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347 (2014). The three patents were generally directed towards “a method and system for entering data relating to an insurance claim for a damaged vehicle.” In each case, the PTAB sided with the Petitioner, finding that the claims were directed towards the abstract idea of valuing a damaged vehicle based on information about that vehicle and therefore not patent eligible.
On December 22nd the Court of Appeals for the Federal Circuit issued its sua sponte en banc In re Tam decision regarding the constitutionality of the “disparaging” marks bar under Section 2(a) of the Lanham Act. A Federal Circuit panel previously upheld a Trademark Trial and Appeal Board (the TTAB) decision affirming the refusal under the disparaging marks provision of Section 2(a) of a trademark application for the mark "THE SLANTS." Would a “substantial composite” of Asians find the phrase THE SLANTS disparaging? The answer was “yes”, as detailed in our earlier blog posting on this case. Judge Moore, writing for the Federal Circuit panel in initially affirming the appeal decision, however, raised the question as to whether the court should consider the constitutionality issues about the registration standard raised by Mr. Tam on an en banc basis. Her peers agreed to do so.
Last week the Federal Circuit denied Sequenom’s petition for rehearing en banc to review patent eligibility of their cell-free fetal DNA patent, U.S. Pat. No 6,258,540 (the ’540 Patent). The District Court found the ’540 Patent invalid under 35 U.S.C. § 101 for being directed to ineligible subject matter under the U.S. Supreme Court precedent in Mayo v. Prometheus Laboratories, 132 S. Ct. 1298 (2012). The Federal Circuit affirmed and Sequenom filed the petition for rehearing en banc.
Recently, the Patent Trial and Appeal Board (“the Board”), issued an informative decision in Apotex Inc., v. Wyeth, LLC, IPR2015-00873 (“the ‘873 IPR”), providing insight into how the Board will apply estoppel under 35 U.S.C. §315(e)(1) and exercise its discretion under 35 U.S.C. §325(d). Previously, Apotex filed an IPR petition, IPR2014-00115 (“the ‘115 IPR”), against the same patent at issue in the ‘873 IPR, which resulted in the issuance of a Final Written Decision. In view of the Final Written Decision in the ‘115 IPR, the patent owner asserted that Apotex was estopped from “requesting inter partes review because the asserted grounds are based on prior art that the petitioner ‘was aware of, cited and relied upon [in the previous] ‘115 IPR.’” Finding that the preconditions for §315(e)(1) estoppel applied, the Board found that the petitioner was estopped from raising one of the two asserted grounds. No estoppel applied to the other ground, however, because the ground was merely raised, but not instituted on, in the earlier proceeding.
In the recent Federal Circuit decision in Circuit Check v. QXQ Inc., the Court discusses the bounds of analogous art when considering the scope and content of the prior art in an obviousness determination. In making the determination whether a claim is obvious, the fact finder is required to decide, among other things, the scope and content of the prior art. This is because not every potential disclosure that pre-dates the invention can be considered prior art; the disclosure must be analogous to the claimed invention. It is well-established that the test for whether prior art is analogous is “if it is from the same field of endeavor or if it is reasonably pertinent to the particular problem the inventor is trying to solve.” The Federal Circuit used the Circuit Check decision to iterate that there are indeed limits to determining what is “reasonably pertinent” to the particular problem the inventor is trying to solve.
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.