Knobbe/Martens: Intellectual Property Law

Bryan J. Johnson

Aesthetic Appeal Does Not Render Design Patent Invalid

July 24, 2019 Bryan J. Johnson and Mark Kachner


Before Hughes, Schall, and Stoll.  Appeal from the United States District Court for the Eastern District of Michigan.

Summary:  Aesthetic appeal is not an invalidating form of functionality for design patents; patent exhaustion and repair doctrines apply equally to utility patents and design patents.



March 29, 2019 Bryan J. Johnson and Karen M. Cassidy

Before Wallach, Clevenger, and Stoll.  Appeal from the United States District Court for the District of Delaware.

Summary: Claims directed to a specific method of treatment for specific patients using a specific compound at specific doses to achieve a specific outcome may be patent eligible, despite using a natural law or phenomenon. 

A Different Shade of Gray: The Scope and Limits of Gray Market Goods and Recent Developments in the Cosmetics Space

Under the first sale doctrine, once a trademark owner first authorizes its branded product to be sold to a consumer, the trademark owner’s right to control the further re-sale of that product is generally said to be “exhausted”, so long as the product is not “materially different” from the origin

Modern Meadow: Patenting Lab-Grown Leather

November 27, 2018 Bryan J. Johnson, Loni Morrow and Peter Law

In 2017, New Jersey based biotech startup Modern Meadow launched Zoa™, which is inspired by leather and is the company’s first brand of biofabricated materials.  Zoa™, a name derived from the Greek term for life, zoi, will feature products created with Modern Meadow’s proprietary technology.  According to the Zoa website, Modern Meadow’s first generation of materials have “the ability to be any density, hold to any mold, create any shape, take on any texture, combine with any other material and be any size.” 



November 16, 2018 Bryan J. Johnson and Karen M. Cassidy

Before Dyk, Wallach, and Taranto. Appeal from the United States District Court for the Western District of Washington

Summary: Claims directed to improving computer security by using BIOS memory to store a license can be a non-abstract computer-functionality improvement if done by a specific technique that departs from earlier approaches to solve a specific computer problem.


Ninth Circuit Reaffirms Laches as an Equitable Defense in Trademark Cancellation Actions

August 2, 2018 Bryan J. Johnson

In Cosmetic Warriors v. Pinkette Clothing, the Ninth Circuit addressed the availability of laches in trademark infringement and cancellation actions under the Lanham Act. 

Cosmetic Warriors Limited (CWL) is a cosmetics retail company, which owns almost 1000 LUSH retail stores worldwide and has been operating in the U.S. since 2002.  CWL owns multiple U.S. trademark registrations, including registrations of LUSH on perfumes and hair services. 


En Banc (excl. Chen), Opinion for the court filed by Stoll, joined by Newman, Lourie, Moore, O’Malley, Wallach, and Taranto.  Appeal from the United States District Court for the Eastern District of Virginia.

Summary: 35 U.S.C. § 145 does not require Applicants to pay the attorneys’ fees of the United States Patent and Trademark Office (“USPTO”) when challenging an adverse decision of the USPTO in district court.



China FDA Issues Guidance on 3D Printed Medical Devices

April 27, 2018 Bryan J. Johnson

More than two and a half years after the China Food and Drug Administration (CFDA) formally approved its first three-dimensional (3D) printed medical device for mass production, a hip implant co-developed by Peking University’s Third Hospital and AK Medical, the agency has issued a draft guidance on the regulatory requirements for approval of 3D printed devices.


April 20, 2018 Bryan J. Johnson and Baraa Kahf

Before Reyna, Taranto, and Hughes. Appeal from the United States District Court for the Central District of California

Summary: An individual claiming sole inventorship of a patent has standing under 35 U.S.C. § 256 to establish ownership of the patent, unless he has entered into a contract in which he assigns, or promises to assign, the rights to the patent, or he was “hired-to-invent” such that his employer is entitled to claim his inventive work.

FDA Announces Plans for Alternative Clearance Pathway

January 22, 2018 Bryan J. Johnson

The U.S. Food and Drug Administration (FDA) Commissioner Scott Gottlieb recently announced that the agency plans to publish a draft guidance outlining a voluntary alternative pathway for new, moderate-risk devices for use in patient care.

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