Over at the Copyright & Trademark Matters blog, our colleagues have published a complete write-up on the Supreme Court’s decision in Star Athletica, L.L.C. v. Varsity Brands, Inc. (No. 15-866), in which the Justice’s ruled that the decorative elements on a cheerleading uniform can fall within the scope of articles protectable by copyright.

Justice Thomas, writing for the majority, ruled that the decorative elements on the cheerleading uniforms (shown below) met the threshold requirement of being  a “pictorial, graphic, or sculptural work” that can be granted a copyright if the copyrightable elements are sufficiently original and meet other requirements of the Copyright Act. Slip Op. at 10-11.

Cheerleader Uniforms

See what Susan Neuberger Weller and Michael Marion have to say about the case here: Let’s Go, Big ©! Let’s Go!

 

While design patents are gaining wider attention—thanks in part to the highly-publicized litigation involving Samsung and Apple—they still remain an underutilized form of intellectual property (IP) protection.  This blog discusses the benefits of design patent protection, and what is required to obtain a design patent.

There are two predominate types of patents: 1) utility patents that protect “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof,” and 2) design patents that protect “any new, original and ornamental design for an article of manufacture.”  While both types of patents provide valuable IP protection, utility patent applications outnumber design patent applications by nearly 7 to 1 (e.g., 288,335 utility patent applications were filed in the U.S. in 2015 vs. 39,097 design patent applications).

Continue Reading To Seek Design Protection or Not, That is the Question!

Supreme-Court_95619505On Tuesday, the U.S. Supreme Court heard oral argument in the highly anticipated case regarding the patent exhaustion doctrine, Lexmark Int’l, Inc. v. Impression Prods., Inc., No. 15-1189.

As we reported earlier here, the Federal Circuit Court of Appeals, in an en banc decision, agreed with Lexmark and confirmed two important aspects of the patent exhaustion doctrine, namely that (1) a patentee can “sell[] a patented article subject to a single-use/no-resale restriction that is lawful and clearly communicated to the purchaser” without exhausting the patentee’s rights to that item, thereby permitting enforcement of the restrictions via an infringement suit; and (2) because foreign sales do not permit “the buyer to import the article and sell and use it in the United States,” an authorized foreign sale of a product does not exhaust a patentee’s U.S. patent rights to exclude associated with that product.  The Supreme Court subsequently granted Impression Product’s petition to review these two holdings.

Continue Reading The U.S. Supreme Court Hears Oral Argument in Much Anticipated Patent Exhaustion Case

The U.S. Patent and Trademark Office (USPTO) announced this week that the Global Dossier program has expanded to include access to more patent applications worldwide.  The public including applicants, patent holders, businesses monitoring global patent activities, and patent examiners should benefit from this expansion.

Global Dossier is a website created in November 2015 with secure access to patent prosecution histories from the USPTO, European Patent Office, Japan Patent Office, Korean Intellectual Property Office, and the State Intellectual Property Office of the People’s Republic of China (collectively, the IP5).

Continue Reading Global Dossier Expanded To More Patent Applications Around the World

Supreme-Court-seal II. jpgIn a widely anticipated move with implications for patent litigation across the country, the Supreme Court ruled today that the equitable defense of laches is not available to limit damages in patent infringement cases subject to the six-year damages limitation of 35 U.S.C. § 286.

In S.C.A. Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, the Supreme Court extended to the patent context its reasoning in Petrella v. Metro-Goldwyn-Mayer, Inc. (2014) that laches cannot defeat a claim for copyright infringement damages brought within the rolling three-year limitations period prescribed by the Copyright Act.

Continue Reading Supreme Court Shuts the Door on Patent Laches

FinancialReviewIn the recent decision of Clarilogic v. Formfree Holdings, the Federal Circuit invalidated the patentee’s (Formfree) claim to a “computer-implemented method for providing certified financial data indicating financial risk about an individual.”  In sum, Claim 1 of Formfree’s patent recited (1) “electronically collecting financial account data” (e.g., historical transaction data) for an individual, (2) validating the data by “applying an algorithm engine” to identify exceptions that “indicate incorrect data or financial risk,” (3) confirming the exceptions by “collecting additional data and applying the algorithm engine to the additional data,” and (4) “generating, using a computer, a report from the financial account data and the valid exceptions.”

Continue Reading Federal Circuit Invalidates Claim to Generating “Financial Risk” Reports

Medical_techRecently, the U.S. District Court of Delaware dismissed a complaint filed by Genentech under the Biologics Price Competition and Innovation Act (“BPCIA”). The complaint was filed in response to Amgen seeking FDA approval to commercialize a biosimilar version of Genentech’s cancer drug, Avastin®.

Pursuant to 42 U.S.C. § 262(l)(2), a key provision of the BPCIA, upon FDA acceptance of a biosimilar application for review, an applicant has twenty days to submit the application and “such other information that describes the process or processes used to manufacture the biological product that is the subject of such application” to the reference product sponsor (“RPS”).  According to Genentech’s complaint, Amgen produced the application for its proposed Avastin® biosimilar, but declined to provide manufacturing information. Genentech also alleged that this “obstructed Genentech’s ability to perform an infringement analysis of its patent portfolio by withholding ‘confidential information’ highly relevant to that analysis,” and further, that Amgen “unreasonably with[held] its permission for any of Genentech’s expert consultants to review the limited information…Amgen has provided.” Continue Reading BPCIA Helps Amgen Gain Dismissal of Genentech Complaint

On March 14, 2017, the United States Court of Appeals for the Federal Circuit clarified, in a precedential opinion, that an anticipating reference must supply all of the claim elements, regardless of what a person of skill in the art might envision when reading the reference.  In Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co. Ltd., et al., the Federal Circuit explicitly rejected the notion that a patent claim may be anticipated by a prior art reference lacking a claim element when a skilled artisan reading the reference would “at once envisage” that missing element.  Reversing the Patent Trial and Appeal Board (“PTAB”), the Federal Circuit panel held that Nidec’s patent was not anticipated.

Continue Reading Federal Circuit Reverses PTAB’s Holding of Anticipation Despite an Element Missing from the Prior Art

On March 3, 2017, the United States Court of Appeals for the Federal Circuit reaffirmed, in a precedential opinion, that prosecution disclaimers may only limit the scope of a claim where the disclaimer is “both clear and unmistakable to one of ordinary skill in the art.” In Technology Properties Ltd. v. Huawei Technologies Co., Ltd., the Federal Circuit made clear that statements made during patent prosecution will not constitute a disclaimer of claim scope where the statements are “ambiguous or amenable to multiple reasonable interpretations,” but that a disclaimer based on unambiguous statements during prosecution may serve to surrender more claim scope than was necessary to overcome a rejection. Continue Reading Federal Circuit Reiterates That Patent Prosecution Disclaimers Must Be “Clear and Unmistakable”

shutterstock_219589294A recent decision in the Western District of Kentucky highlights the importance of explaining in a complaint under the Defend Trade Secrets Act why the allegedly misappropriated information qualifies for trade secret protection. The decision is an important reminder that it is not enough to simply call something a “trade secret” in a complaint under the DTSA. Rather, a plaintiff must plausibly allege how the information qualifies as a trade secret. Where a plaintiff fails to do so, the complaint is susceptible to dismissal with prejudice under Fed. R. Civ. P. 12(b)(6).

Continue Reading Failure to Explain Why Misappropriated Information is a Trade Secret May Lead to Dismissal of a DTSA Complaint With Prejudice