IP UPDATE
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Exploring the latest in intellectual property law
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Hit a Nerve? Obviousness Inquiry Must Address Claims at Issue

by | Jul 20, 2023 |

The US Court of Appeals for the Federal Circuit vacated and remanded a Patent Trial & Appeal Board non-obviousness decision, finding that the context of the proposed combination of prior art in the Board’s obviousness inquiry was not directed toward the context of the claim at issue. Axonics, Inc. v. Medtronic, Inc., Case No. 21-1451 (Fed Cir. July 10, 2023) (Lourie, Dyk, Taranto, JJ.)

Axonics filed petitions for inter partes review (IPR) challenging the validity of two patents owned by Medtronic as obvious. During the IPRs, the Board analyzed two prior art references, an article titled, “Electrical Stimulation of the Trigeminal Nerve Root for the Treatment of Chronic Facial Pain” by Ronald Young and a patent assigned to Gerber. The Medtronic patents described percutaneously positioning a lead to stimulate the sacral nerve. By contrast, Gerber described positioning an electrode in the sacral nerve region in a non-percutaneous way, and Young described positioning an electrode percutaneously to stimulate the trigeminal sensory root. The Board found that Medtronic’s patents were not obvious over Young in view of Gerber because of lack of motivation to combine the two prior art references. The Board also noted “that the proposed combination ‘would not be feasible in the trigeminal nerve region.’” Axonics appealed.

The Federal Circuit found that the Board erred in conducting the obviousness analysis. The Board’s proposed analysis centered on Young’s trigeminal sensory root context, not the Medtronic patents’ sacral nerve context. First, the Board questioned whether motivation to use the resulting combination of Young and Gerber existed in the trigeminal nerve context, but not in Medtronic patents’ sacral nerve context. Second, the Board found “that the relevant art [of the Medtronic patents] is medical leads specifically for sacral neuromodulation.”

Addressing the first error, the Federal Circuit explained that the prior art combination must be directed toward meeting the requirement of the claimed patent, not the requirement of the first prior art. The Court found that the Board did not conduct this analysis. Addressing the second error, the Court noted that “the relevant art” of the Medtronic patents was not “limited to medical leads for sacral-nerve stimulation.” The Court examined the specification of the patent as well as its claim and ruled that the scope of the Medtronic patents was broader than what the Board concluded.

The Court found that the Board’s errors were not harmless since the Board relied on these errors in rejecting Axonics’s obviousness arguments and provided no other reason for concluding Medtronic’s claims were not obvious. Therefore, the Court vacated the Board’s decision and remanded for further consideration.

Practice Note: In considering obviousness arguments under 35 U.S.C. § 103, keep in mind the difference between the claim at issue and the considered combination of prior art. The scope of the claim also needs to be considered based on the entirety of the patent.

Woohyeong Cho, a summer associate in the Washington, DC, office, also contributed to this case note.



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Speculative Injury from Rulemaking Petition Denial Doesn’t Confer Standing

by and | Jul 20, 2023 | ,

The US District Court for the District of Columbia affirmed the dismissal of a case alleging that the US Patent & Trademark Office (PTO) violated the Administrative Procedure Act (APA) by denying the plaintiffs’ rulemaking petition. The district court found that the plaintiffs’ alleged injury was too speculative to confer Article III standing. US Inventor, Inc. v. US Patent and Trademark Office, Case No. 22-2218 (D.D.C. July 12, 2023) (Bates, J.)

Under the America Invents Act (AIA), the Patent Trial & Appeal Board may hear challenges to the validity of patents through inter partes review (IPR) and post-grant review (PGR). The decision to initiate a review is made at the discretion of the PTO on a case-by-case basis. US Inventor, Inc., and National Small Business United (collectively, NSBU) filed a rulemaking petition with the PTO, arguing that the PTO unlawfully designated cases as precedential or informative without putting those considerations through notice-and-comment rulemaking, as required by the APA. NSBU expressed the same position in a previous lawsuit filed in the Eastern District of Texas that was dismissed for lack of standing—a decision upheld by the US Court of Appeals for the Fifth Circuit. NSBU subsequently filed a lawsuit in the District of Columbia. The PTO filed a motion to dismiss for lack of standing.

In a motion to dismiss, a court will accept facts alleged in the complaint as true but will not assume the truth of legal conclusions. The District of Columbia noted that not every denial of a rulemaking petition confers standing on the petitioner. Standing is established by claiming an injury in fact that can be traced to the defendant’s actions and is likely to be redressed by the court. Therefore, a plaintiff must show that the denial of the petition caused a concrete injury in fact. Injury in fact must be concrete, particularized and not conjectural or hypothetical. Standing can be established via associational standing or organizational standing. Here, the court found that NSBU could establish neither.

In finding no associational standing, the District of Columbia agreed with the PTO that NSBU’s theory of injury was too speculative and not concrete. NSBU proposed an “uncertain series of events” that could lead to an alleged injury, but the court rejected the claim as attenuated conjecture based on the actions of independent third parties (similar to the fact pattern in the Supreme Court’s 2013 decision in Clapper v. Amnesty Int’l USA.)

The District of Columbia heavily criticized the first step of NSBU’s proposed series of events, which was that a valid IPR or PGR would have to be filed on behalf of a patent held by a member of NSBU’s organizations. The court found that identifying potential members that might face IPR or PGR proceedings if a third party decided to bring a claim against them was too hypothetical and relied entirely on the actions of a third party.

The District of Columbia also disagreed with NSBU’s reliance on statistics. NSBU argued that patent cancellation is more likely [...]

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Amending a Range? Better Enable It

by | Jul 13, 2023 |

In a post-grant review appeal, the US Court of Appeals for the Federal Circuit explained that patent claims reciting a range must enable the full scope of that range and, under the Administrative Procedure Act (APA), the Patent Trial & Appeal Board is not bound to decisions rendered in a Preliminary Guidance. Medytox, Inc. v. Galderma S.A., Case No. 22-1165 (Fed. Cir. June 27, 2023) (Dyk, Reyna, Stark, JJ.)

Medytox owns a patent directed to the use of animal-protein-free botulinum toxins with long-lasting effects. Galderma challenged the validity of Medytox’s patent in a post-grant review. In response to the challenge, Medytox filed a motion to amend the patent under the Board’s Pilot Program, which allows a petitioner to amend the patent claims and receive a preliminary decision as to whether the amendment would preserve the patent’s validity (Preliminary Guidance). Medytox proposed modifying the claims so that they only encompassed treatment methods that possessed a patient response rate of “50% or greater.” Galderma opposed the motion, arguing that claiming a 50% to 100% response rate constituted new matter, meaning the claim language improperly claimed an invention that was not described in the patent application as filed.

The Board issued a Preliminary Guidance construing the new claim language and explaining that it did not believe that Medytox’s amended claims represented new matter. According to the Board, the new limitation did not “necessarily” claim a range of 50% to 100% and instead could just be claiming 50% or greater. The Board explained that since the patent contained the concept of a greater than 50% response rate, claiming that rate was not new matter. As a consequence of the Board’s positive reception, Medytox amended all the claims to include the new language. Galderma once again opposed the motion and further argued that the amended claims were not enabled. The Board held an oral hearing and questioned the parties on the proper construction of the “50% or greater” claim language.

In its final written decision, the Board decided that the limitation was a range of 50% to 100%, contrary to its statement in the Preliminary Guidance. Because the claimed limitation was a range, the Board—citing the Supreme Court’s 2023 decision in Amgen v. Sanofi and the Federal Circuit’s 2012 decision in Magsil v. Hitachi Global Storage—explained that the entire range must be enabled. The patent, however, only described a response rate of up to 62%, so the Board found that the claimed range was not enabled. Medytox appealed.

Medytox alleged three errors. First, Medytox argued that the Board’s new construction was wrong. Second, Medytox argued that the claims were enabled. Finally, Medytox argued that the Board violated the APA by capriciously departing from its Preliminary Guidance. The Federal Circuit rejected Medytox’s arguments and affirmed the Board’s decision.

First, the Federal Circuit determined that there was no meaningful difference between the two possible constructions—claiming a response rate greater than 50% was essentially the same as claiming a response rate of [...]

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Not on the Merits: Claim Preclusion Doesn’t Bar Inducement Claims After Direct Infringement Case

by | Jul 13, 2023 |

Applying Seventh Circuit law to determine whether the dismissal of patent infringement claims should be upheld on the basis of claim preclusion, the US Court of Appeals for the Federal Circuit reversed a district court ruling that the claims were precluded by res judicata. Inguran, LLC v. ABS Global, Inc., Case No. 22-1385 (Fed. Cir. July 5, 2023) (Lourie, Bryson, Reyna, JJ.)

At the district court, ABS argued that a previous infringement suit brought by Inguran precluded it from bringing the instant suit. At issue was whether the previous suit asserting direct infringement of Inguran’s “GSS technology” used to create “single-sexed semen straws” barred the current suit, which alleged that ABS induced third parties to infringe upon the same technology by entering into licensing agreements with these third parties. The district court agreed with ABS. Inguran appealed.

To successfully assert claim preclusion under Seventh Circuit law, a party must meet the following three-factor test:

  1. An identity of the parties or their privies in the first and second lawsuits
  2. An identity of the cause of action
  3. A final judgment on the merits in the first suit.

The Federal Circuit’s analysis focused on the second requirement. In determining whether there was an identity of the cause of action, the Court examined whether the second claim was based on the same set of transactional facts as the earlier litigation between the parties. In patent infringement cases, the general rule is that res judicata does not bar the assertion of new rights acquired during the previous action, which could have been litigated but were not (i.e., claims that arose while the litigation was ongoing but after the original complaint was filed).

The Federal Circuit determined that the transactional facts between the present case and the previous litigation were different because the cases respectively centered around theories of induced infringement by third parties and direct infringement. As the Court noted, “The evidence needed to support these two claims (induced infringement vs direct infringement) is different.” To allege and prove induced infringement, Inguran needed to establish additional facts beyond what it asserted in the previous case to show direct infringement. As the Court noted, an “induced infringement claim rests on evidence and elements beyond those required by direct infringement.” Although minimal evidence regarding the activities of the third parties was part of the record in the previous litigation, the parties ultimately stipulated that direct infringement occurred. The issue of induced infringement, however, was never presented to the jury.

The Federal Circuit held that although both cases implicated similar facts, including extensive discussions of the “GSS technology,” the direct infringement allegations could not reasonably serve to bar later allegations regarding the actions of third-party licensees. The Court accepted Inguran’s argument that any induced patent infringement claim it might have brought at the time of the earlier case would have been based on speculation: “[w]e agree with ST that it could not have asserted an inducement claim during ABS I.” The Court therefore rejected the district [...]

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CEO Punches Ticket and Avoids Sanctions Based on Receiving Confidential Documents

by | Jun 29, 2023 |

Addressing protective order violations, the US Court of Appeals for the Fifth Circuit largely vacated a district court’s sanctions order. The Court explained that sanctions must comply with due process, barring parties from future litigation should be treated as a “death-penalty” sanction and damages calculations require specific factfinding. CEATS, Inc. v. TicketNetwork, Inc., Case No. 21-40705 (5th Cir. June 19, 2023) (Elrod, Haynes, Willett, JJ.)

To settle a long-running dispute, TicketNetwork licensed several patents from CEATS, a non-practicing patent assertion entity. Several years into the license, all of the licensed patents were invalidated in an unrelated litigation. TicketNetwork promptly stopped paying royalties and filed suit seeking a declaration that the license agreement was unenforceable. CEATS counterclaimed for breach of contract.

During discovery, CEATS requested TicketNetwork’s list of affiliates, which TicketNetwork refused to produce, citing its highly confidential nature. After two discovery hearings, the district court ordered TicketNetwork to produce the affiliate list but specifically prohibited CEATS from using the list for any purpose other than use in the present litigation.

At trial, a jury found that TicketNetwork breached the license, and the district court awarded attorneys’ fees and costs to CEATS. After the jury verdict, CEATS CEO Milford Skane asked his litigation consultants for a “non-confidential” list of TicketNetwork’s affiliates. The consultants gave Skane the confidential list, which was promptly used in settlement negotiations with TicketNetwork. TicketNetwork filed for sanctions, requesting damages from CEATS and an injunction preventing CEATS from suing or seeking licenses from the listed affiliates.

The district court ordered an investigation and, after two years of inquiry and an all-day evidentiary hearing, found that Skane, the consultants and CEATS all violated the protective order and were jointly and severally liable to TicketNetwork. As sanctions, the district court awarded $500,000 in attorneys’ fees (using a billing rate nearly double the one it used when calculating CEATS’s fees) and barred Skane, the consultants and CEATS from suing or seeking licenses from any of TicketNetwork’s affiliates.

The sanctioned parties appealed and argued:

  • The district court violated due process by finding Skane and the consultants personally liable without giving them notice or opportunity to respond.
  • The district court erred by barring the parties without a finding of bad faith.
  • The district court’s damages calculation was unsupported.

The Fifth Circuit began by addressing the sanctions against Skane and the litigation consultants. The Court explained that sanctions require due process, which includes both fair notice and the opportunity to defend against the claim. The Court observed that the first time Skane and the consultants were made aware that they could be sanctioned was in the sanctions order itself—and their only opportunity to defend themselves took place after that order. Given the lack of any advance notice, the Fifth Circuit concluded that due process had not been satisfied and vacated the monetary sanctions against Skane and the consultants.

The Fifth Circuit also vacated the bar preventing Skane, the consultants and CEATS from suing or seeking licenses from any of the affiliates. Core [...]

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First Rule of the PTAB? Play by the Rules

by | Jun 22, 2023 |

The US Court of Appeals for the Federal Circuit affirmed two Patent Trial & Appeal Board decisions holding the challenged claims unpatentable as obvious, even though the Board declined to consider evidence of antedating and found that the claims lacked written description support. Parus Holdings, Inc. v. Google LLC, Case Nos. 22-1269; -1270 (Fed. Cir. June 12, 2023) (Lourie, Bryson, Reyna, JJ.)

Parus Holdings owns two patents related to an interactive voice system to request information from a voice web browser. Google (among others) petitioned for inter partes review (IPR) of the patents.

During the IPR proceedings, the Board found that a publication (Kovatch) was prior art to the challenged patents. In reaching that decision, the Board declined to consider Parus’s arguments and evidence of an earlier conception and reduction to practice because they were only presented via incorporation by reference in violation of 37 C.F.R. § 42.6(a)(3). The Board ruled that Parus failed to meet its burden of production on antedating.

The Board also found that the publication of the application to which Parus’s challenged patents claimed priority (Kurganov-262) was prior art because the common specification failed to provide written description support for the challenged claims. Parus appealed the Board’s decision, raising two main arguments.

First, Parus contended that the Board erred when it declined to consider Parus’s arguments and evidence on antedating. Parus argued that § 42.6(a)(3)’s prohibition on incorporation by reference did not warrant the Board’s decision because Parus, as patent owner, need not have submitted a response at all. Parus also argued that the Federal Circuit’s 2017 decision in Aqua Products mandates that the Board consider all record evidence, regardless of the manner of presentation. The Federal Circuit rejected Parus’s arguments in turn.

Regarding Parus’s violation of the incorporation by reference rule, the Federal Circuit explained that Parus had assumed an affirmative burden of production when it chose to submit a response to antedate Kovatch. Along with that burden came other responsibilities, such as complying with the US Patent & Trademark Office’s (PTO) rules and regulations, including § 42.6(a)(3). The Court further explained that this burden of production could not be met without some combination of citing evidence with specificity and explaining the significance of the cited material. Parus did neither.

The Federal Circuit also rejected Parus’s argument that the Board is required by law to review all evidence in the record. The Court clarified that, while its Aqua Products holding requires the Board to decide all issues properly before it, nothing in Aqua Products requires the Board to review evidence or issues not introduced or introduced in violation of the Board’s rules. As the Court noted, “[t]he burden of production cannot be met simply by throwing mountains of evidence at the Board without explanation or identification of the relevant portions of that evidence. One cannot reasonably expect the Board to sift through hundreds of documents, thousands of pages, to find the relevant facts.”

Parus also argued that the Board exceeded its statutory authority under 35 U.S.C. [...]

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Under High Pressure: New Mechanism of Action Can’t Save Drug Administration Claims

by | Jun 22, 2023 |

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board ruling that method claims reciting a mechanism of action triggered by the co-administration of two known antihypertensive agents were obvious over the cited prior art. In re Couvaras, Case No. 22-1489 (Fed. Cir. June 14, 2023) (Lourie, Dyk, Stoll, JJ.)

This case arose out of applicant John Couvaras’s prosecution of patent claims reciting a method of increasing prostacyclin release in the systemic blood vessels to improve vasodilation in a human with essential hypertension by co-administering two therapeutic agents. During prosecution, Couvaras conceded that the two claimed therapeutic agents had been known as essential hypertension treatments for many decades. The examiner agreed, citing 10 references as confirmation. The examiner further found that the physiological results of co-administering the two therapeutic agents were not patentable because they naturally flowed from the claimed administration of the known antihypertensive agents.

Couvaras appealed to the Board, arguing that the increased prostacyclin release was unexpected and that objective indicia overcame any existing prima facie case of obviousness. The Board disagreed, ruling that the increased prostacyclin release was inherent in the obvious administration of the two known antihypertensive agents and that no evidence existed to support a finding of any objective indicia. Couvaras appealed.

Couvaras raised three arguments on appeal:

  1. The Board erred in affirming that a skilled artisan would have had motivation to combine the art.
  2. The claimed mechanism of action was unexpected, and the Board erred in discounting its patentable weight by deeming it inherent in the claimed method.
  3. The Board erred in weighing objective indicia of non-obviousness.

With respect to motivation to combine, the Federal Circuit agreed with the Board that the art supplied sufficient motivation to combine because the claimed therapeutic agents were known for decades to treat hypertension, finding the Board’s conclusion supported by substantial evidence. The Court found that Couvaras had forfeited a related argument for no reasonable expectation of success by failing to first raise that challenge to the Board.

The Federal Circuit also rejected Couvaras’s argument that the claimed mechanism of action was unexpected and therefore entitled to patentable weight. Couvaras argued that the Board downgraded the patentable weight of limitations drawn to the antihypertensive agents’ mechanism of action by deeming them to be merely inherent. According to Couvaras, even if the recited mechanism of action was inherent in the claimed administration of the two agents, that mechanism was unexpected because the increased prostacyclin release was unexpected and could not be dismissed as having no patentable weight due to inherency.

The Federal Circuit disagreed, explaining that Couvaras was attempting to claim a mechanism of action that naturally flows from the co-administration of two known antihypertensive agents and that “[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.” The Court allowed that while mechanisms of action may not always meet the most rigid standards for inherency, “[r]eciting the mechanism for known compounds [...]

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Inventorship Hosed Clean: Contribution, Corroboration and Collaboration Prove Joint Invention

by | Jun 22, 2023 |

The US Court of Appeals for the Federal Circuit affirmed a decision to correct inventorship, finding that the alleged joint inventor’s contribution to a claimed invention was significant and adequately corroborated by evidence. Blue Gentian, LLC v. Tristar Products, Inc., Case Nos. 21-2316; -2317 (Fed. Cir. June 9, 2023) (Prost, Chen, Stark, JJ.)

Blue Gentian owns utility and design patents directed to an expandable hose. Prior to filing the first patent application, Michael Berardi (the sole inventor of the asserted patents and Blue Gentian’s principal) met with non-party Gary Ragner to discuss investing in Ragner’s expandable hose. Berardi had no experience designing hoses at the time of the meeting. Berardi testified that he came up with the idea of his hose after watching a demonstration video of Ragner’s hose but before the meeting. At the meeting, Ragner disclosed a prototype and documents relating to his hose and discussed the inner components of the hose. Berardi built his first prototype a day after the meeting and filed his first patent application three months later. Blue Gentian subsequently filed suit against Tristar for infringement of its expandable hose patents. Tristar counterclaimed to correct inventorship of the patents, alleging that Ragner should have been named a co-inventor.

A court may order a correction of inventorship when it determines that an inventor has been erroneously omitted from a patent. The inventors listed on an issued patent, however, are presumed to be the only true inventors. Thus, a party must prove incorrect inventorship by clear and convincing evidence. An alleged joint inventor’s testimony standing alone is insufficient to establish inventorship by clear and convincing evidence; the testimony must be corroborated by evidence. A joint inventor must contribute significantly to the invention’s conception or reduction to practice, and the contribution must involve some collaboration with the other inventor.

The district court, after an evidentiary hearing, entered judgment on the inventorship counterclaim in Tristar’s favor and ordered correction of the patents under 35 U.S.C. § 256. Blue Gentian appealed.

The Federal Circuit found that Ragner conveyed three key elements of the hose to Berardi at the meeting and that these elements were a significant contribution to the conception of at least one claim of each asserted patent. The Court noted that these were the very elements Blue Gentian used to distinguish the invention from the prior art, establishing the element’s significance. The Court also found that Ragner’s testimony about conveying the three elements to Berardi at the meeting was adequately corroborated by both physical and circumstantial evidence. The evidence showed the similarity between Ragner’s disclosed prototype and Berardi’s first prototype, and documentary evidence showed Ragner’s familiarity with the three elements before the meeting. Finally, the Court found sufficient collaboration between Berardi and Ragner based on the information exchanged at the meeting, including Ragner’s prototype, confidential documents and verbal explanations about alternative hose designs.

The Federal Circuit dismissed Blue Gentian’s argument that claim construction was needed before analyzing Ragner’s contribution because Blue Gentian did not identify a dispute [...]

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The Best Option Is Obviously Not the Only Option

by | Jun 22, 2023 |

Following a jury verdict finding infringement of two patents and awarding $2.2 billion, the Patent Trial & Appeal Board issued a final written decision finding all claims in one of the asserted patents invalid. The Board explained that an asserted prior art combination only needs to be a suitable option, not the best option. Patent Quality Assurance, LLC v. VLSI Tech. LLC, Case No. IPR2021-01229 (June 13, 2023) (Giannetti, McNamara, Melvin, APJs).

In March 2021, a jury found that Intel infringed two patents owned by VLSI. On July 7, 2021, Patent Quality Assurance filed an inter partes review petition against all claims of one of the patents Intel was found to infringe. The Board instituted review. After institution, Intel filed an identical petition and motion for joinder, both of which were granted.

The challenged patent is directed to a method of determining the minimum operating voltage for integrated-circuit memory, storing the value of that voltage in nonvolatile memory, and using the value to determine when an alternative power-supply voltage may be switched to the memory to ensure that the minimum operating voltage is met. Intel challenged the claims of the patent based primarily on a combination of three prior art references.

VLSI raised numerous arguments for why the combination of prior art references did not teach the claimed invention. VLSI argued that a skilled artisan would not have had reason to regulate the power supply voltage of one reference with the voltage regulator of another. VLSI asserted that there would have been no need to use the switching mechanism if voltage regulation was available from the outset. The Board disagreed and quoted the US Court of Appeals for the Federal Circuit’s 2022 decision in Intel v. Qualcomm, which stated that “a petitioner is required to show only that there is something in the prior art as a whole to suggest the desirability of making the combination, not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available.”

The Board reiterated this theme in response to another of VLSI’s arguments. VLSI contended that a person of skill in the art would not have combined the prior art disclosure of a system for determining minimum operating voltages and storing them in nonvolatile memory with a reference that uses SRAM, a type of volatile memory commonly used as an alternative to nonvolatile memory. The Board again noted that “there is no requirement that an asserted combination is the best option, only that it be a suitable option.”

Given the jury’s verdict and damages award in the district court case, VLSI also argued that the jury’s verdict showed commercial success and was objective indicia of nonobviousness. As part of its analysis, the Board reiterated that the nexus between the alleged commercial success and the asserted patent claims must be both embodied by the commercial product and coextensive with them. The Board went on to find that “the record before [the Board] does [...]

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“TRUMP TOO SMALL” Trademark Decision Heads to Supreme Court

by | Jun 15, 2023 | ,

The Supreme Court agreed to review the US Patent & Trademark Office’s (PTO) challenge to a February 2022 ruling by the US Court of Appeals for the Federal Circuit. In the ruling at issue, the Federal Circuit held that applying Sec. 2(c) of the Lanham Act (which bars registration of a trademark that consists of or comprises a name of a particular living individual without their written consent) may unconstitutionally restrict free speech in violation of the First Amendment in certain instances. Vidal v. Elster, Docket No. 22-704 (Supr. Ct., June 5, 2023).

In 2018, Steve Elster filed an application to register the mark TRUMP TOO SMALL for use on t-shirts, in reference to a 2016 Republican presidential primary debate exchange between then-candidate Donald Trump and Senator Marco Rubio (R-FL). The PTO examining attorney and subsequently the Trademark Trial & Appeal Board refused registration of the mark on grounds that it clearly referred to former President Trump, and that Elster did not have written consent to use former President Trump’s name, in violation of Sec. 2(c) of the Lanham Act. On Elster’s appeal, the Federal Circuit ruled that the Board’s refusal to register the trademark TRUMP TOO SMALL for use on t-shirts involved content-based discrimination that was not justified by a compelling or substantial government interest.

Following PTO Director Vidal’s January 2023 petition for a writ of certiorari, the Supreme Court granted cert and will consider whether the First Amendment allows content-based but viewpoint-neutral restrictions on which trademarks may be registered—and in this case, the PTO’s restriction on marks that consist of or comprise a name identifying a particular living individual (such as former President Donald Trump) except by their written consent.

The issue on which cert was granted: Whether the refusal to register a trademark under 15 U.S.C. § 1052(c) violates the free speech clause of the First Amendment when the mark contains criticism of a government official or public figure.



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