The Patent Trial and Appeal Board’s (“PTAB”) institution rate for inter partes reviews (“IPRs”) has fallen virtually every year.  In its recent decision in Apple, Inc. v. Fintiv, Inc. issued on May 13, 2020, the PTAB denied institution of Apple’s petition for IPR and set forth a new test for determining whether to institute an IPR based on the status of the underlying district court proceedings, which suggests that institution rates may continue to fall.
Continue Reading The PTAB’s Ground-Breaking Decision in Apple v. Fintiv Promises to Make IPR Institutions More Challenging

On March 31, 2020, the U.S. Patent and Trademark Office (USPTO) announced that it is permitting trademark applicants to request extensions of the time allowed to file certain documents and to pay certain fees due to the ongoing COVID-19 emergency in the United States.  USPTO director Andrei Iancu has exercised temporary authority granted to him under Section 12004(a) of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed into law on March 27.  The USPTO remains open for the filing of trademark and TTAB documents and fees.
Continue Reading USPTO Permitting Trademark Applicants to Extend Certain Deadlines Due to COVID-19

The U.S. Court of Appeals for the Federal Circuit recently issued three interesting, related opinions interpreting and applying the “technological invention” exception to Covered Business Method Review (“CBM Review”). These opinions serve as a reminder that litigation often turns on an advocate’s effectiveness in framing (or re-framing) a critical issue of law before the court.

The three Federal Circuit opinions are:

Continue Reading Framing Your Pitch: A Lesson from the TTI v. IBG Cases

This article was originally published on PatentlyO.com.

In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Federal Circuit had its first opportunity to address the impact of the “or otherwise available to the public” clause contained in post-AIA 35 U.S.C. § 102. In finding that the AIA “did not change the statutory meaning of ‘on sale’ in the circumstances involved here,” the Federal Circuit provided insight into the continued relevance of the forfeiture doctrine of Metallizing Engineering v. Kenyon Bearing.
Continue Reading Metallizing Forfeiture Post-Helsinn

Patent attorneys are often asked the question: “Is my idea patentable?”  Often the idea is related to software or business methods.  Well-known business methods include Amazon’s “1-click shopping” and Priceline’s “reverse auction.”  In the new digital economy, innovative software and business method models have given rise to new very successful companies such as LinkedIn, Uber, and Airbnb.  As important software and business method inventions are in the new digital economy, it is often unclear whether they can be patented.  This uncertainty is largely due to a legal rule that “abstract ideas” are not eligible for patent protection.  This rule originates from a long line of U.S. Supreme Court cases, with Alice Corporation v. CLS Bank International, decided in June of 2014, being the most recent and influential of these cases.  The basic rationale for the rule is a concern over so-called “preemption” of abstract ideas.  That is to say abstract ideas are the basic building blocks of science and industry, and allowing patents to monopolize abstract ideas can preempt the use of such basic building blocks.
Continue Reading Software and Business Method Inventions After Alice

In a precedential decision, the Trademark Trial and Appeal Board (“TTAB”) held that the filing of a cancellation petition before the five-year anniversary mark of a registration tolls Trademark Act Section 14 for purposes of adding claims to a proceeding. Ashland Licensing & Intellectual Property LLC v. Sunpoint International Group USA Corp., Cancellation No. 92057294, 2016 TTAB LEXIS 219 (T.T.A.B. June 7, 2016) [precedential].
Continue Reading TTAB Precedential Decision: Time Limit for Adding Claims Is Tolled by Filing of Cancellation Within Registration’s Fifth Anniversary

The U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s refusal to register the stylized mark CHURRASCOS for bar and restaurant services based on genericness.  In re Cordua Restaurants, Inc., 2016 WL 2786364 (Fed. Cir. May 13, 2016).

The Board refused registration of the stylized version of the mark CHURRASCOS, holding that “churrascos” is a generic term for both a type of meat as well as a restaurant featuring that type of meat.  The applicant, Cordua Restaurants, appealed the decision of the Board, arguing that the mark CHURRASCOS is incontestable based on Cordua’s already-existing federal registration for the word mark CHURRASCOS, and that the Board’s refusal was therefore an error.Continue Reading Federal Circuit Affirms Refusal to Register “Churrascos” Based on Genericness, Despite Prior Federal Registration of the Mark

In its May 16, 2016 decision in Jackson Brumley et al. v. Albert Brumley & Sons Inc. et al., the Sixth Circuit expressed skepticism of the Second Circuit’s and Ninth Circuit’s interpretation of the 304(c) termination provisions of the Copyright Act, despite ultimately deciding the case on an issue of contractual interpretation.  The Court handed down a decision respecting the termination rights of songwriter Albert Brumley’s heirs in the famous gospel song “I’ll Fly Away,” concluding that those termination rights had not been bargained away via a contract that did not specifically address termination.  Although the outcome of the case hinged on contract interpretation, rather than the specifics of the 1976 Copyright Act’s termination provisions under 304(c), opinion author Judge Sutton took the time to express skepticism of previous circuit court interpretations of the 304(c) termination provisions of the Copyright Act.
Continue Reading Sixth Circuit Rules in Favor of Songwriter’s Heirs in Copyright Termination Decision in Jackson Brumley et al. v. Albert Brumley & Sons Inc. et al.