Cecilia Choy, Ph.D.
Subscribe to Cecilia Choy, Ph.D.'s PostsCecilia Choy, Ph.D., focuses her practice on intellectual property matters and is a certified patent agent. Read Cecilia Choy's full bio.
2023 IP Outlook: What to Watch in Patent, Trademark and Copyright Law
By Sarah Bro, Douglas Carsten, Syed K. Fareed, Mandy H. Kim, Charles Larsen, Christina (Tina) L. Martini, Jennifer M. Mikulina, Amol Parikh, Eleanor B. Atkins, Cecilia Choy, Ph.D., Anisa Noorassa, Alexander Piala, PhD, Joshua Revilla, Christian Tatum and Diana Pisani on Feb 7, 2023
Posted In Copyrights, EU Update, Life Sciences, Patents, Technology, Trademarks
Coming out of 2022, developments around the globe are shaping the intellectual property (IP) landscape in the new year. We are seeing cases at the intersection of IP law and NFTs, the opening of the Unified Patent Court in Europe, and decisions from the Supreme Court of the United States and the Court of Appeals...
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Contingent Statement Doesn’t Unequivocally Abandon Defense of Challenged Claims
By Cecilia Choy, Ph.D. on Jan 12, 2023
Posted In Patents
The Director of the US Patent & Trademark Office (PTO) initiated a sua sponte review of the Patent Trial & Appeal Board’s (Board) adverse judgments in multiple related inter partes review (IPR) proceedings. The PTO Director ultimately ordered that the judgments be vacated and remanded for further consideration. Apple Inc. v. Zipit Wireless, Inc., IPR2021-01124;...
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Bad Connection: Claim Construction Argument without Explanation Given No Weight
By Cecilia Choy, Ph.D. on Dec 22, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) obviousness decision after finding that the patent owner failed to explain how its cited extrinsic evidence supported its proposed claim construction. Uniloc 2017 LLC v. Netflix, Inc., Case No. 21-2085 (Fed. Cir. Dec. 15, 2022) (Dyk, Taranto, Hughes,...
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Game Over when Expert Fails to Use Correct Claim Construction
By Cecilia Choy, Ph.D. on Dec 8, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit concluded that a district court did not abuse its discretion in striking expert testimony where the testimony did not rely on an agreed and court-adopted claim construction. Treehouse Avatar LLC v. Valve Corp., Case No. 22-1171 (Fed. Cir. Nov. 30, 2022) (Lourie, Reyna, Stoll, JJ.) Treehouse...
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FDCA’s Exclusive Enforcement Provision Reigns Supreme over State Laws
By Cecilia Choy, Ph.D. on Sep 29, 2022
Posted In Trademarks
In its first occasion to interpret § 353b of the Federal Food, Drug, and Cosmetic Act (FDCA), the US Court of Appeals for the Ninth Circuit relied on the “implied preemption doctrine” to affirm a district court’s case dismissal for failure to state a claim under Fed. R. Civ. P. 12(b)(6). Nexus Pharmaceuticals, Inc. v....
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Secondary Meaning: Consumers Connect Product with Single Anonymous Source
By Cecilia Choy, Ph.D. on Sep 8, 2022
Posted In Trademarks
Reversing and remanding a district court’s grant of summary judgment in favor of an accused trade dress infringer, the US Court of Appeals for the Ninth Circuit explained that trade dress does not need to be linked to a particular company. If consumers link the trade dress to any single (even anonymous) source or company,...
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Claim Cancelation Limits but Doesn’t Prohibit Assignor Estoppel Defense
By Cecilia Choy, Ph.D. on Aug 25, 2022
Posted In Patents
On remand from the Supreme Court, the US Court of Appeals for the Federal Circuit reconsidered the boundaries of the doctrine of assignor estoppel. The Federal Circuit found that the patent assignor was estopped from challenging the validity of an asserted patent because the asserted claim was not materially broader than the specific claims assigned...
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Publisher’s Fair Use Defense Dries Up
By Cecilia Choy, Ph.D. on Aug 18, 2022
Posted In Copyrights
The US Court of Appeals for the Ninth Circuit overturned a district court’s summary judgment, rejecting an accused publisher’s argument that their use of copyrighted photos embedded in articles was fair use under the Copyright Act. McGucken v. Pub Ocean Ltd., Case No. 21-55854 (9th Cir. Aug. 3, 2022) (Ikuta, Nguyen, Owens, JJ.) Elliot McGucken...
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Court to Counsel: Be Frivolous at Your Own Risk
By Cecilia Choy, Ph.D. on Jul 28, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit may “award just damages and single or double costs to the appellee” under the Federal Rule of Appellate Procedure 38 if an appeal is frivolous as filed or as argued. In a non-precedential decision, the Court granted-in-part and denied-in-part a party’s motion for sanctions and request...
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Can’t Hide Behind Minor Clerical Error to Escape Willful Infringement Verdict
By Cecilia Choy, Ph.D. on Jun 9, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit affirmed a district court decision correcting a clerical error in a claim. Pavo Solutions LLC v. Kingston Technology Company, Inc., Case Nos. 21-1834 (Fed. Cir. June 3, 2022) (Lourie, Prost, Chen, JJ.) The Pavo patent is generally directed to a “flash memory apparatus having a single...
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