Addressing whether a party can waive a challenge to the constitutionality of Administrative Patent Judges’ (APJs’) appointment, the US Court of Appeals for the Federal Circuit found that the issue is non-jurisdictional and therefore waivable. Ciena Corp. v. Oyster Optics, LLC, Case No. 19-2117 (Fed. Cir. Jan. 28, 2020) (O’Malley, J.) (reissued as precedential May 5, 2020).
The US Court of Appeals for the Federal Circuit found claims directed to methods of fishing to be patent ineligible, affirming a Patent Trial and Appeal Board (PTAB) decision that the claims were directed to the abstract idea of selecting a fishing hook based on observed water conditions. In re: Christopher John Rudy, Case No. 19-2301 (Fed. Cir. Apr. 24, 2020) (Prost, CJ).
A unanimous panel of the US Court of Appeals for the Seventh Circuit upheld a default judgment and permanent injunction against an online marketer for trademark infringement, false advertising, dilution, unfair competition under the Lanham Act, and claims under Illinois statutory and common law. Quincy Bioscience, LLC v. Ellishbooks, et al., Case No. 19-1799 (7th Cir. Apr. 24, 2020) (Wood, J.).
The US Court of Appeals for the Federal Circuit affirmed a US Patent & Trademark Office (PTO) Trademark Trial and Appeal Board (TTAB) refusal to register the mark STRATUS over the existing registration for STRATA, finding a likelihood of confusion between the two marks. Stratus Networks, Inc. v. UBTA-UBET Communications, Inc., Case No. 19-1351 (Fed. Cir. Apr. 14, 2020) (Reyna, J.).
Addressing issues related to the disgorgement of profits and attorneys’ fees in a trademark infringement lawsuit, the US Court of Appeals for the Eighth Circuit affirmed a denial of such fees and profits. Safeway Transit LLC and Aleksey Silenko v. Discount Party Bus, Inc., Party Bus MN LLC, and Adam Fernandez, Case No. 18-2990 (8th Cir. Apr. 6, 2020) (Smith, J.).
In 2000, Alex Fernandez started Party Bus MN, which was the first party-bus company in the Twin Cities region. In 2004, Fernandez formed Discount Party Bus Co., LLC (DPB). Fernandez also used the names “Rent My Party Bus” and “952 Limo Bus” in print advertising before 2008.
The US Court of Appeals for the Federal Circuit held that the Federal Reserve Banks of several cities are “persons” under the America Invents Act (AIA) and therefore may petition for post-issuance review under the AIA. Bozeman Financial LLC v. Federal Reserve Bank of Atlanta et al., Case No. 19-1018 (Fed. Cir. Apr. 10, 2020) (Moore, J.).
Bozeman owns two patents directed to methods of authorizing and clearing financial transactions to detect and prevent fraud. The Federal Reserve Banks of Atlanta, Boston, Chicago, Cleveland, Dallas, Kansas City, Minneapolis, New York, Philadelphia, Richmond, San Francisco and St. Louis filed a petition for covered business method (CBM) review of several claims of Bozeman’s patents. The Patent Trial and Appeal Board (PTAB) ultimately found the challenged claims ineligible under 35 U.S.C. § 101. Bozeman appealed.
McDermott Will & Emery’s IP Update blog highlights the latest cases and legislative issues shaping intellectual property (IP), including patents, trademarks, trade secrets, copyrights and more.
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Search for: BLOG EDITORS STAY CONNECTED Subscribe TOPICSTOPICS Select Category America Invents Act Antitrust Cert Alert Copyrights EU Update Food, Beverage & Agribusiness Life Sciences Patents Technology Trade Secrets Trademarks Uncategorized ARCHIVES ARCHIVES Select Month July 2025 June 2025 May 2025 April 2025 March 2025 February 2025 January 2025 December 2024 November 2024 October 2024 September 2024 August 2024 July 2024 June 2024 May 2024 April 2024 March 2024 February 2024 January 2024 December 2023 November 2023 October 2023 September 2023 August 2023 July 2023 June 2023 May 2023 April 2023 March 2023 [...]Reviewing a decision from the United States Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board, the Federal Circuit vacated and remanded the Board’s refusal to register a trademark consisting of a gradient of multiple colors applied to product packaging, and relied on Supreme Court precedent in concluding that color marks can be inherently distinctive when used on product packaging “depending upon the character of the color design.” In re Forney Industries, Inc., Case No. 2019-1073 (Fed. Cir. Apr. 8, 2020) (O’Malley, J.)[precedential].
The US Court of Appeals for the Seventh Circuit affirmed a district court finding that a trade dress for a conveyor belt fastener was invalid as functional because its utilitarian advantages were disclosed in patents, advertising materials and internal corporate documents. Flexible Steel Lacing Co. v. Conveyor Accessories, Inc., Case No. 19-2035 (7th Cir. Apr. 7, 2020) (Ripple, J.).
Addressing whether a dog toy meant to humorously evoke a bottle of whiskey was entitled to First Amendment protection, the US Court of Appeals for the Ninth Circuit held that the toy was a protectable expressive work. The Ninth Circuit vacated and remanded the district court’s finding of trademark infringement, reversed the judgment on dilution, and upheld the validity of the whiskey proprietor’s trademark and trade dress rights. VIP Products LLC v. Jack Daniel’s Properties, Inc., Case No. 18-16012 (9th Cir. Mar. 31, 2020) (Hurwitz, J.).
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