Articles Posted in Intellectual Property

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Guild makes mortgage loans and has used the mark “GUILD MORTGAGE COMPANY” since 1960. Guild was founded in California and has expanded to over 40 other states. It applied to register the mark “GUILD MORTGAGE COMPANY,” and design, in International Class 36 for “mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans.” The application states that color is not claimed as a feature of the mark and that the “mark consists of the name Guild Mortgage Company with three lines shooting out above the letters I and L.” Registration was refused (15 U.S.C. 1052(d)) due to a likelihood of confusion between Guild’s mark and the mark “GUILD INVESTMENT MANAGEMENT” registered in International Class 36 for “investment advisory services,” which is owned by Guild Investment Management, Inc. a Los Angeles investment company. The Board affirmed. The Federal Circuit vacated. The Board erred by failing to address Guild’s argument and evidence related to “DuPont factor 8,” which examines the “length of time during and conditions under which there has been concurrent use without evidence of actual confusion.” Guild argued that it and Guild Investment have coexisted in business for over 40 years without any evidence of actual confusion. View "In re: Guild Mortgage Co." on Justia Law

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UCB’s 650 patent, which covers certain chemical derivatives of 3,3- diphenylpropylamines, including a compound called fesoterodine. Fesoterodine is an antimuscarinic drug marketed as Toviaz® to treat urinary incontinence. In inter partes review, the Patent and Trademark Office Patent Trial and Appeal Board held that certain claims were not unpatentable as obvious, 35 U.S.C. 103. The Federal Circuit affirmed, first rejecting UCB’s argument that Amerigen lacked standing because the FDA will not approve Amerigen’s abbreviated new drug application until the expiration of the 650 patent in 2022, so that there was no possibility of infringement. The evidence supported the Board’s finding that the Amergen neither established a general motivation to make a 5-HMT prodrug nor proved that the specific claimed modifications would have been obvious. View "Amerigen Pharmaceuticals, Ltc. v. UCB Pharma GMBH" on Justia Law

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WesternGeco’s patents relate to technologies used to search for oil and gas beneath the ocean floor. The patents relate to controlling streamers and sensors in relation to each other by using winged positioning devices and generating four-dimensional maps with which it is possible to see changes in the seabed over time. WesternGeco manufactures the Q-Marine, and performs surveys for oil companies. ION manufactures the DigiFIN, and sells to its customers, who perform surveys for oil companies. A jury found infringement and no invalidity and awarded WesternGeco $93,400,000 in lost profits and $12,500,000 in reasonable royalties. The Federal Circuit affirmed, rejecting arguments that WesternGeco was not the patents' owner and lacked standing and that the court applied an incorrect standard under 35 U.S.C. 271(f)(1). The court upheld denial of enhanced damages for willful infringement and reversed the award of lost profits resulting from conduct occurring abroad. The Supreme Court subsequently held “that WesternGeco’s damages award for lost profits was a permissible domestic application of [35 U.S.C.] 284,” but did not decide other challenges to the lost profits award. In light of the Supreme Court’s decision and the intervening invalidation of four asserted patent claims that could support the lost profits award, the Federal Circuit remanded to the district court. View "WesternGeco L.L.C. v. Ion Geophysical Corp." on Justia Law

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Realtime’s 812 patent discloses “[s]ystems and methods for providing lossless data compression and decompression . . . [that] exploit various characteristics of run-length encoding, parametric dictionary encoding, and bit packing.” ’ Run-length encoding is a form of lossless data compression where a “run” of characters is replaced with an identifier for each individual character and the number of times it is repeated. In inter partes review, the Patent and Trademark Office’s Patent Trial and Appeal Board found that all of the challenged claims would have been obvious over the prior art, 35 U.S.C. 103(a). The Federal Circuit affirmed. The Board was not required to make any finding regarding a motivation to combine given its reliance on the prior art alone, which disclosed every element of claims 1–4, 8, and 28. In relying on the prior art alone, the Board did not violate section 312(a)(3) or other notice requirements. The Board did not expressly construe the phrase “maintaining a dictionary,” but found that the prior art satisfied this limitation because it disclosed all of the steps in dependent claim 4. View "Realtime Data, LLC v. Iancu" on Justia Law

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AC’s 680 patent relates generally to data access and management. The Patent Trial and Appeal Board held that certain claims were unpatentable. On reconsideration, it invalidated the remaining claims based on a ground of unpatentability raised by Amazon’s petition but not addressed in the final written decision. AC argued that the Board exceeded its authority and deprived it of fair process by belatedly considering this ground. The Federal Circuit upheld the Board’s decision. Precedent mandates that the Board consider all grounds of unpatentability raised in an instituted petition. The Board complied with due process and did not err in either its claim construction or its ultimate conclusions of unpatentability. As AC admits, after the Board decided to accept Amazon’s rehearing request and consider Ground 3, it permitted AC to take discovery and submit additional briefing and evidence on that ground. View "AC Technologies S.A. v. Amazon.com, Inc." on Justia Law

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Marco Guldenaar filed the provisional application from which the 196 patent application claims priority in 2010. The 196 patent application, entitled “Casino Game and a Set of Six-Face Cubic Colored Dice,” relates to “dice games intended to be played in gambling casinos, in which a participant attempts to achieve a particular winning combination of subsets of the dice.” The Patent Trial and Appeal Board affirmed the rejection of claims 1–3, 5, 7–14, 16– 18, and 23–30 the application under 35 U.S.C. 101 for claiming patent-ineligible subject matter. The Federal Circuit affirmed, holding that the claims are directed to the abstract idea of rules for playing a dice game and the only arguably inventive concept relates to the dice markings, which constitute printed matter. View "In re: Marco Guldenaar Holding B.V." on Justia Law

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Spineology’s patent describes an “expandable reamer” for use in orthopedic surgery. Wright manufactures a reamer known as the X-REAM®. In 2015, Spineology sued Wright, alleging the X-REAM® infringes its patent. The district court refused to adopt either party’s construction of the term “body” but construed “body” consistent with Wright’s noninfringement position and granted Wright summary judgment. Wright then sought attorney fees, 35 U.S.C. 285, arguing Spineology’s proposed construction of “body,” its damages theories, and its litigation conduct rendered the case “exceptional.” The Federal Circuit affirmed the denial of the motion. While ultimately the court rejected Spineology’s proposed construction, the attempt was not so meritless as to render the case exceptional. The court determined “the arguments made by Spineology to support its damages theory . . . are not so meritless as to render the case exceptional” and “[n]othing about this case stands out from others with respect to the substantive strength of Spineology’s litigating position or the manner in which the case was litigated.” View "Spineology, Inc. v. Wright Medical Technology Inc." on Justia Law

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In December 2015, Apple filed two petitions for inter partes review of the 696 patent, challenging certain claims as obvious. VirnetX filed responses arguing that prior art reference RFC 2401 was not a printed publication under 35 U.S.C. 102(b) as of November 1998. The Patent Board found that RFC 2401 was a printed publication and concluded that the 696 patent was unpatentable as obvious. During the pendency of VirnetX’s appeal, the Federal Circuit decided another case between the parties (VirnetX I), upholding the Board’s decision that RFC 2401 was a printed publication as of November 1998. The Federal Circuit then held that VirnetX is collaterally estopped by the VirnetX I judgment from relitigating the printed publication issue. VirnetX did not preserve an issue of whether inter partes review procedures apply retroactively to patents that were filed before Congress enacted the America Invents Act. View "VirnetX Inc. v. Apple, Inc." on Justia Law

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Laerdal, which manufactures and distributes medical devices, filed a complaint at the International Trade Commission asserting violations of 19 U.S.C. 1337 by infringement of Laerdal’s patents, trademarks, trade dress, and copyrights by importing, selling for importation, or selling within the U.S. certain medical devices. The Commission investigated Laerdal’s trade dress claims, one patent claim, two copyright claims, and one trademark claim, excluding all others. Despite being served with notice, no respondent responded. An ALJ issued the Order to Show Cause. Respondents did not respond. An ALJ issued an initial determination finding all respondents in default. Laerdal modified its requested relief to immediate entry of limited exclusion orders and cease and desist orders. The Commission requested briefing on remedies, the public interest, and bonding. The Commission's final determination granted Laerdal limited exclusion orders against three respondents and a cease and desist order against one, based on patent and trademark claims; it issued no relief on trade dress and copyright claims, finding Laerdal’s allegations inadequate. As to trade dress claims, the Commission found that Laerdal failed to plead sufficiently that it suffered the requisite harm, the specific elements that constitute its trade dresses, and that its trade dresses were not functional; despite approving the ALJ’s initial determination of default and despite requesting supplemental briefing solely related remedy, the Commission issued no relief on those claims. The Federal Circuit vacated. The Commission violated 19 U.S.C. 1337(g)(1) by terminating the investigation and issuing no relief for its trade dress claims against defaulting respondents. View "Laerdal Medical Corp. v. International Trade Commission" on Justia Law

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When the patent owner filed for the 772 patent, the law defined the patent term as 17 years from the date the patent issued. The law was later amended to define the patent term as expiring 20 years from the patent’s earliest effective filing date, Uruguay Round Agreements Act of 1994 (URAA), 108 Stat. 4983. The owner then filed for the related 990 patent. The change in law caused the second patent to expire earlier than the first patent. The owner concedes that the claimed inventions in the two related patents are obvious variants of each other. The district court invalidated the 772 patent based on obviousness-type double patent; the invalidating reference, the 990 patent, was filed and issued after, but expired before, the 772 patent. The Federal Circuit reversed. The patents are governed by different patent term statutory regimes; the correct framework is to apply the traditional obviousness-type double patenting practices extant in the pre-URAA era to the pre-URAA patent and look to that patent’s issuance date as the reference point for obviousness-type double patenting. Under this framework, and because a change in patent term law should not truncate the term statutorily assigned to the pre-URAA 772 patent, the 990 patent is not a proper double patenting reference. View "Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical, Inc." on Justia Law