Knobbe/Martens: Intellectual Property Law

Nicole R. Townes

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Can Ear Plugs Tune Out Color? Bright Green Color For Ear Plugs Not Functional

June 21, 2018 Shuchen Gong and Nicole R. Townes

Moldex-Metric, Inc. filed a trademark infringement lawsuit against McKeon Products.  Moldex-Metric asserted that McKeon infringed its unregistered trade dress consisting of a bright green color for foam ear plugs by using a similar green color for ear plugs.

PGS GEOPHYSICAL AS v. IANCU

June 8, 2018 Vicki Y. Nee and Nicole R. Townes

Before Wallach, Taranto, and Stoll.  Appeal from the Patent Trial and Appeal Board.

Summary: The Federal Circuit determined that it had jurisdiction to hear an appeal from a Board decision in an IPR even though the Board erred in limiting the scope of the IPR by not instituting on all claims and grounds. 

 

IN RE: HTC CORPORATION

Before PROST, WALLACH, and TARANTO.  On Petition for Writ of Mandamus to the U.S. District Court for the District of Delaware.

Summary: The patent venue statute, 28 U.S.C. § 1400(b), does not apply to foreign corporations, which may be sued in any district where they are subject to personal jurisdiction.

01 COMMUNIQUE LABORATORY, INC. V. CITRIX SYSTEMS, INC.

April 26, 2018 Neil G. Anderson and Nicole R. Townes

Before Newman, Mayer, and Stoll.  Appeal from the U.S. District Court for the Northern District of Ohio.

Summary:  While there is not a “practicing the prior art” defense to literal infringement, a litigant is not precluded from arguing that if a claim term is broadly construed to read on the accused product, then the same broad construction will read on the prior art. 

 

VANDA PHARMACEUTICALS INC. V. WEST-WARD PHARMACEUTICALS INTERNATIONAL LIMITED

Before Prost, Lourie and Hughes. Appeal from the United States District Court for the District of Delaware.

Summary:  When another patent for a drug issues after an ANDA is filed, there can still be jurisdiction for an infringement lawsuit and a finding of infringement of that patent even when the ANDA is not amended until after the lawsuit is filed. 

 

 

NESTLÉ USA, INC. v. STEUBEN FOODS, INC.

March 15, 2018 Derek M. Abeyta and Nicole R. Townes

Before Dyk, Reyna, and Hughes.  Appeal from the Patent Trial and Appeal Board.

Summary: Where the Federal Circuit had previously construed the same claim term in an appeal involving a related patent also owned by the patentee in the present case, collateral estoppel applied as to the construction of that term in this appeal even though the claims were not identical.

 

STEUBEN FOODS, INC. v. NESTLE USA, INC.

March 15, 2018 David T. Kim and Nicole R. Townes

Before Dyk, Reyna, and Hughes.  Appeal from the Patent Trial and Appeal Board

Summary: In an inter partes review proceeding,  broadest reasonable interpretation of a claim term must encompass all embodiments unless there is a support for a narrower interpretation.

 

ARENDI S.A.R.L. v. GOOGLE LLC

February 21, 2018 Douglas B. Wentzel and Nicole R. Townes

Before Newman, Bryson, and Moore.  Appeal from the Patent Trial and Appeal Board.

Summary: Prosecution disclaimer occurred when an applicant explained why claims were amended and the Examiner confirmed the reasons for allowance.

 

Beware! A Trademark Trial and Appeals Board Decision Can Stop You in Your Tracks

January 29, 2018 Nicole R. Townes and Jeff Van Hoosear

It has been a few years since the Supreme Court decision in the case B&B Hardware, Inc. v. Hargis Industries, Inc., and we are beginning to see the aftermath in the district courts.  In B&B Hardware, the Supreme Court held that decisions of the Trademark Trial and Appeal Board (“TTAB”) regarding whether a trademark should be entitled to federal registration can have a preclusive effect in trademark infringement actions in district court.  Specifically, the Supreme Court held that “[s]o long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply.”  See B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293, 1310 (2015).

CORE WIRELESS LICENSING S.A.R.L. v. LG ELECTRONICS, INC.

January 26, 2018 Clayton R. Henson and Nicole R. Townes

Before Moore, O’Malley, and Wallach.  Appeal from the Eastern District of Texas (Judge Gilstrap).

Summary: Claims directed to summarizing and presenting information on display interfaces for electronic devices are patent eligible under 35 U.S.C. § 101 when they are directed to a specific improvement over prior systems rather than an abstract idea.

MAXLINEAR, INC. v. CF CRESPE LLC

January 25, 2018 David J. Grant and Nicole R. Townes

Before Dyk, Schall, and Reyna.  Appeal from the Patent Trial and Appeal Board.

Summary: Final written decisions by an administrative tribunal invalidating a patent can have a preclusive effect.

FINJAN, INC. V. BLUE COAT SYSTEMS, INC.

January 10, 2018 Daniel Kiang and Nicole R. Townes

Before Dyk, Linn, and Hughes.  Appeal from the Northern District of California.

Summary: Claims directed to behavior-based virus scanning, as opposed to the traditional code-matching method, constituted a patent-eligible improvement in computer functionality.  Also, for reasonable royalty damages, apportionment beyond the smallest, identifiable technical component of an accused product is required if the technical component contains non-infringing features.

General Mills Finds Out That Yellow Is Not “Magically Delicious”: Brands Fighting To Protect Their True Colors

September 13, 2017 Nicole R. Townes and Jonathan Hyman

Years after the Christian Louboutin v. Yves Saint Laurent battle over red soled shoes, trademark protection for color continues to be a hot topic.  On August 22, 2017, the Trademark Trial and Appeal Board (“TTAB”) held that General Mills was not entitled to a trademark registration for its yellow Cheerios’ box shown below:

Meow - Copycat Fur and Bows - Forever 21 Stares Down Puma

As discussed in our previous blog post Puma Treads New Territory Hitting Forever 21 with Copyright Allegations after the Supreme Court’s Star Athletica Decision, Puma sued Forever 21 for design patent infringement, trade dress infringement, copyright infringement and unfair competition in the Central District of California.  Specifically, Puma alleged that Forever 21 copied its “Fenty” label shoes which were designed by Puma with the help of famous pop star, Rihanna. 

RED GOLD for Jewelry: Obviously Generic (Or Maybe Not…)

April 11, 2017 Nicole R. Townes and Jason J. Jardine

On March 24, 2017, the U.S. Court of Appeals for the Ninth Circuit ruled that the term “red gold” may not be a generic term for jewelry and watches, and thus, may serve as a trademark.  Specifically, the Ninth Circuit found that there were questions of fact that needed to be decided by a jury as to whether the term was generic.

Design Patents – The Often Forgotten, But Useful Protection for Accessories and a Designer’s Timeless and Staple Pieces

February 6, 2017 Nicole R. Townes and Robert Roby

Although trademarks and copyrights most frequently come to mind when considering the types of intellectual property protection available for fashion items, design patents can also offer valuable protection.  A design patent is a form of legal protection directed to the ornamental appearance of an otherwise functional item.

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