PTO Extends Time for Small and Micro Entities to Pay Certain Fees

Under the Coronavirus Aid, Relief, and Economic Security (CARES) Act, the US Patent and Trademark Office (PTO) extended the time for small and micro entities to make certain fee payments until September 30, 2020. Also pursuant to the CARES Act, the PTO waived the petition fees for petitions to revive until July 31, 2020. For small and micro entities only, the following fees due between, and inclusive of both, March 27, 2020, and September 29, 2020, will be considered timely if paid on or before September 30, 2020, if the payment is filed with a statement that the failure to timely pay the fee was due to the Coronavirus (COVID-19) outbreak: The basic filing fee, search fee, examination fee and late filing surcharge due in response to a PTO notice issued during the pre-examination processing Basic national fee Issue fee Maintenance fee. The PTO will also waive the petition fee under 37 CFR § 1.17(m) for petitions to revive filed by July 31, 2020, if the failure...

Continue Reading

Reliance on Common Sense Permitted in Obviousness Analysis

The US Court of Appeals for the Federal Circuit affirmed a final written decision from the Patent Trial and Appeal Board (PTAB) finding patent claims directed to aircraft lavatories obvious based on prior art because a skilled artisan would have used common sense to incorporate a missing limitation into the prior art. B/E Aerospace, Inc. v. C&D Zodiac, Inc., Case Nos. 19-1935, -1936 (Fed. Cir. June 26, 2020) (Reyna, J.). C&D Zodiac sought inter partes review of two patents owned by B/E Aerospace relating to space-saving technologies for aircraft lavatory enclosures. The challenged claims recited a “first recess” and a “second recess” associated with a lavatory unit. The PTAB found that the challenged claims were obvious over several prior art patents under separate “traditional” and “common sense” approaches. The PTAB based its traditional approach on Zodiac’s arguments and expert testimony. The PTAB’s common sense approach relied on the prior art in...

Continue Reading

Lights Out for Light-Up Shoe Patent, Thanks to Non-Limiting Preamble

Finding that a patent’s preamble was not limiting and the patent owner’s secondary considerations of non-obviousness were weak, the US Court of Appeals for the Federal Circuit upheld a finding of obviousness by the Patent Trial and Appeal Board (PTAB). Shoes By Firebug LLC v. Stride Rite Children’s Grp., LLC, Case Nos. 19-1622, -1623 (Fed. Cir. June 25, 2020) (Lourie, J.). Stride Rite filed two inter partes review petitions challenging the patentability of two of Firebug’s patents directed to illuminated footwear. The patents describe footwear with light sources imbedded between multiple layers of upper portions of the footwear. The PTAB found the challenged claims unpatentable as obvious in view of the prior art references, concluding that the preambles of both Firebug patents did not limit the claims and Firebug’s evidence of secondary considerations of non-obviousness did not offset the disclosure of the references. Firebug appealed Firebug asserted that...

Continue Reading

Knock It Off, Knockoffs? Ninth Circuit Affirms Trade Dress Rights but Not Fame

Taking on issues of functionality and fame relating to trade dress rights, the US Court of Appeals for the Ninth Circuit affirmed in part and reversed in part the district court’s judgment after a jury trial on claims of infringement and dilution of trade dress rights in furniture. The Ninth Circuit distinguished utilitarian functionality from aesthetic functionality, and reaffirmed the high burden on the proponent of dilution to establish that the mark has become a “household name.” Blumenthal Distributing, Inc. DBA Office Star v. Herman Miller, Inc., Case Nos. 18-56471, -56493 (9th Cir. June 25, 2020) (Korman, J.). In 2013, Herman Miller accused Office Star Products (OSP) of selling unauthorized replicas of its Eames lounge chair and Aeron ergonomic office chair, and filed suit against the company for infringement and dilution of its claimed registered and unregistered trade dress rights in the chairs. A jury found that both the registered and unregistered...

Continue Reading

GOOGLES Wins Right to Sue Google

The US Court of Appeals for the Second Circuit vacated and remanded a district court’s dismissal of a trademark dispute for lack of subject matter jurisdiction, noting that the dispute arose under contractual standing, which is not a jurisdictional issue. SM Kids, LLC v. Google LLC, Alphabet Inc., Case No. 19-cv-2547 (2d Cir. June 25, 2020) (Parker, J.). In 1997, Googles Children’s Workshop registered the trademark GOOGLES and the internet domain name www.googles.com. The website launched in 1998 and focused on children’s education and entertainment. That same year, Google adopted its name, and in 2004 it registered the GOOGLE mark. In 2005, the founder of Googles Children’s Workshop sued Google for trademark infringement. In 2007, the Googles Children’s Workshop founder assigned all rights in the mark GOOGLES to Stelor Productions. In 2008, Stelor and Google settled the trademark infringement dispute, with Google agreeing to not intentionally make material...

Continue Reading

“Seams” Like Activity Giving Rise to Infringement Risk Supports Appellate Jurisdiction

Adding to its body of jurisprudence on standing to challenge an adverse final written opinion in inter partes review (IPR) proceedings, the US Court of Appeals for the Federal Circuit found a petitioner had constitutional standing to appeal where it showed it engaged in activity that would give rise to a possible infringement suit. Adidas AG v. Nike, Inc., Case Nos. 19-1787; -1788 (Fed. Cir. June 25, 2020) (Newman, J.). Nike owns two patents which are generally directed to methods of manufacturing an article of footwear with a textile upper and which cover Nike’s Flyknit product. Five months after Nike announced Flyknit, Adidas announced a similar product that it called Primeknit. Adidas filed petitions for IPR challenging Nike’s patents. The Patent Trial and Appeal Board (PTAB) found that Adidas had not demonstrated the challenged claims as unpatentable. Adidas appealed. On appeal, Nike challenged appellate jurisdiction, claiming Adidas had not suffered an...

Continue Reading

Improper Use of Voluntarily Communicated Trade Secrets Sufficient to Maintain Action for Misappropriation in Texas

The US Court of Appeals for the Fifth Circuit held that, under Texas law, a plaintiff can sustain an action for trade secret misappropriation even if the plaintiff voluntarily communicated the alleged trade secrets to the defendant. Hoover Panel Systems, Inc. v. HAT Contract, Inc., Case No. 19-10650 (5th Cir. June 17, 2020) (per curiam). HAT Contract hired Hoover Panel Systems to design and manufacture a power beam for desks in an open office environment. The parties engaged in oral negotiations that culminated in a written contract, which provided that “any . . . proprietary information shall be considered confidential and shall be retained in confidence by the other party.” The contract also provided that the “parties agree to keep in confidence . . . all information disclosed by the other party, which the disclosing party indicates is confidential or proprietary or marked with words of similar import.” Hoover developed a prototype and forwarded it to HAT,...

Continue Reading

German Competition Authority Files Amicus Brief in SEP Litigation

In 2019, Nokia filed a series of patent infringement complaints against Daimler before several German courts. Nokia alleged that connected cars made by Daimler infringed Nokia’s patents. Nokia considered the relevant patents as essential for certain wireless communication standards. Nokia v. Daimler, Case No. 2 O 34/19 (Mannheim District Court). On 18 June 2020, the litigation took a surprising turn: The German competition authority, the Federal Cartel Office (FCO), filed an amicus curiae brief with the relevant patent infringement courts (FCO docket no. P-66/20). The FCO’s amicus curiae brief addressed a specific question in dispute between Nokia and Daimler: Can Nokia lawfully enforce standard-essential patents (SEPs) against Daimler while refusing to grant licenses under the relevant patents to suppliers of Daimler? This question is not limited to the dispute between Nokia and Daimler. Whether an SEP holder is obliged to “license to all,” i.e., to any...

Continue Reading

More Than a Feeling: No Fees for Frivolous Claim Where “Perceived Wrongs Were Deeply Felt”

Addressing the appropriateness of the district court’s decision to deny attorneys’ fees relating to a copyright claim it labeled “frivolous,” the US Court of Appeals for the Seventh Circuit affirmed the denial, despite the strong presumption in favor of awarding fees. Timothy B. O’Brien LLC v. Knott, Case No. 19-2138 (7th Cir. June 17, 2020) (Flaum, J). Apple Wellness owns and operates a small chain of vitamin stores in the Madison, Wisconsin, area. David Knott was hired as an employee of Apple Wellness in 2013 and was fired in 2017. Upon his termination, Knott founded a competing vitamin shop, Embrace Wellness, which allegedly shared several design features and a similar layout, and stocked similar products to those of Apple Wellness’s stores. Apple Wellness sued Knott and Embrace Wellness, alleging trademark, trade dress and copyright infringement. Apple Wellness moved for a preliminary injunction on only the trademark and trade dress claims, which was...

Continue Reading

Damages Award Crumbles in Texas Concrete Manufacturing Row

The Supreme Court of Texas held that a limited partner had standing to sue for alleged loss in the value of its interest in the partnership, but reversed a damages award in favor of that limited partner for insufficient evidence. Pike v. Texas EMC Management, LLC, Case No. 17-0557 (Tex. June 19, 2020) (Busby, J) (Bland, J, dissenting). Texas EMC Products (the partnership) was formed between investors (Wilson and Walker, both individually and through Walker’s company Few Ready Mix) and a Dutch company, EMC Cement BV, which held technology in “energetically modified cement.” Texas EMC Management, LLC, was the general partner. EMC Cement BV, Wilson and Walker were all limited partners with minority shares. The partnership established an EMC plant in Texas. Pike was hired as general manager of Texas EMC Management and the plant. The partnership’s technology did not work as hoped, and the partnership never made a profit. At some point, Walker and Wilson refused to...

Continue Reading

BLOG EDITORS

STAY CONNECTED

TOPICS

ARCHIVES