IP UPDATE
Exploring the latest in intellectual property law
IP UPDATE
Exploring the latest in intellectual property law
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Skinny label: Supreme Court to weigh inducement claims against generics

by | Jan 29, 2026 |

The Supreme Court granted certiorari to review whether a generic drugmaker that fully carves out a patented use from its label can nonetheless be held liable for induced infringement based solely on marketing its product as a generic version of a branded drug and referencing public information about the branded product, without promoting the patented use.

In Amarin Pharma v. Hikma Pharmaceutical USA, Case No. 23-1169 (Fed. Cir. June 25, 2024), the US Court of Appeals for the Federal Circuit concluded that Amarin adequately pleaded induced infringement based on allegations that Hikma marketed its product as a “generic” version of Vascepa and cited publicly available information about Vascepa, even though Hikma’s label carved out the patented indication pursuant to Section viii of the Hatch-Waxman Act.

In its petition to the Supreme Court, Hikma argued that the Federal Circuit’s ruling threatened the statutory balance struck by Hatch-Waxman by exposing skinny-label generic manufacturers to inducement liability based on conduct unrelated to the carved-out use. According to Hikma, permitting inducement claims under these circumstances would effectively nullify Hatch-Waxman Section viii by allowing plaintiffs to rely on generic marketing statements that do not instruct or encourage use of the patented method.

The questions presented are:

  • When a generic drug label fully carves out a patented use, are allegations that the generic drugmaker calls its product a “generic version” and cites public information about the branded drug (e.g., sales) enough to plead induced infringement of the patented use?
  • Does a complaint state a claim for induced infringement of a patented method if it does not allege any instruction or other statement by the defendant that encourages, or even mentions, the patented use?


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Expert had firm grip on Rule 702

by | Jan 29, 2026 |

The US Court of Appeals for the Federal Circuit reversed an exclusion of expert testimony and grant of judgment as a matter of law, finding that the district court improperly conflated admissibility with credibility and weight of the evidence. Barry v. DePuy Synthes Companies, et al., Case Nos. 023-2226; -2234 (Fed. Cir. Jan. 20, 2026) (Prost, Taranto, Stark, JJ.) (Prost, J., dissenting).

Mark Barry owns patents covering surgical techniques and tools for treating spinal deformities. Barry sued DePuy alleging that DePuy induced surgeons to infringe the patents. The patents describe tools and methods, including levers, for applying force to vertebrae to realign the spinal column. Two of the patents required the presence of a “handle means,” which the district court construed as “a part that is designed especially to be grasped by the hand.”

At trial, Barry relied on two experts. His infringement expert, Dr. Walid Yassir, testified that DePuy’s accused tools could be assembled and used in infringing configurations and that certain components (or linked assemblies) constituted the claimed “handle means” under the court’s construction. Barry also offered expert testimony from Dr. David Neal, who conducted a surgeon survey to estimate how often DePuy’s tools were used in infringing configurations, which in turn supported Barry’s damages case.

Although the district court had denied DePuy’s pretrial Daubert motions regarding Barry’s experts, it reversed course mid-trial. The court excluded Yassir’s testimony on the ground that he contradicted the court’s claim construction by equating “handle means” with parts that must be grasped during assembly. The court also excluded Neal’s survey testimony, concluding that methodological flaws, such as nonprobability sampling and alleged defects in question design, rendered the survey unreliable. Having excluded both experts, the court granted DePuy judgment as a matter of law. Barry appealed.

The Federal Circuit agreed that expert opinion that contradicts a court’s claim construction would not be helpful to a jury and should be excluded under Rule 702. The Court found, however, that Yassir did not contradict the court’s construction but instead applied it in a manner a reasonable factfinder could accept or reject – a disputed application that DePuy challenged on cross-examination. However, DePuy did not object to Yassir’s direct testimony despite having secured a pretrial ruling barring evidence inconsistent with the claim construction.

The Federal Circuit concluded that Yassir’s testimony did not contradict the court’s claim construction but rather exposed areas of tension and potential weakness in how Yassir applied that construction to the accused devices. The Court explained that DePuy’s questioning elicited testimony about what could constitute a “handle means” that went to the credibility and persuasiveness of Yassir’s opinions, not their admissibility. The Court rejected the district court’s reliance on isolated testimonial snippets divorced from their surrounding explanations, noting that ordinary ambiguities and concessions revealed through adversarial questioning are for the jury to evaluate and do not convert an expert’s application of a claim construction into an impermissible contradiction warranting exclusion under Rule 702.

The Federal Circuit likewise held that the district court abused [...]

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All rise: Here comes the real judge

by | Jan 22, 2026 |

The US Court of Appeals for the Federal Circuit sustained the Trademark Trial & Appeal Board’s refusal to register trademark applications (over oppositions) for two character marks and a design mark based on the Board’s finding of likelihood of confusion with the common law rights of a world-famous baseball player and major league baseball’s players association  as supported by substantial evidence and consistent with trademark law. Chisena v. Major League Baseball Players Ass’n, Case No. 23-2073 (Fed. Cir. Jan. 8, 2026) (Hughes, Freeman, Lourie, JJ.) (nonprecedential).

Michael Chisena, acting pro se, sought trademark registration for two word marks, ALL RISE and HERE COMES THE JUDGE, and a design mark featuring a baseball field with a superimposed scale of justice and judge’s gavel (pictured below) (Chisena marks) for use in connection with “clothing, namely t-shirts, shirts, shorts, pants, sweatshirts, sweatpants, jackets, jerseys, athletic uniforms, and caps.”

Source: Chisena v. Major League Baseball Players Ass’n, Case No. 23-2073 (Fed. Cir. Jan. 8, 2026), Slip Op at 2.

Chisena filed intent to use applications and alleged that the constructive use priority date for the word marks was July 14, 2017, and for the design mark it was October 12, 2017. The Major League Baseball Players Association (MLBPA) and Aaron Judge, a superstar Yankees outfielder and team captain (collectively, appellees), filed Notices of Opposition against registration of the marks, which the Board consolidated into a single proceeding.

Judge is a well-known baseball player whose rise to fame prompted the commercialization of judicial slogans and insignia in connection with his baseball career. The appellees alleged that the Chisena marks would likely cause confusion with their marks, which include ALL RISE and certain judicial symbols. They argued that they had common law trademark rights that predated Chisena’s alleged priority dates. The Board found that the appellees established priority against the Chisena marks and that there was a likelihood of confusion between the marks and therefore refused to register the Chisena marks. Chisena appealed.

The Federal Circuit found that the Board’s priority decisions were supported by substantial evidence that appellees’ marks were used in commerce prior to the Chisena marks’ priority date. The Court concluded that the priority dates for the Chisena marks were the constructive use filing dates since Chisena did not use the marks in commerce until after he filed the applications. The Court further relied on licensed products bearing judicial slogans, phrases, symbols, and personal indicia related to Judge used as early as June 2017 in holding that appellees’ common law trademark rights predated the Chisena marks’ priority dates.

Chisena argued that appellees did not adequately identify the specific marks at issue in their Notices of Opposition. The Federal Circuit agreed with the Board that the notices provided fair notice because they adequately claimed ownership of the marks that served as the basis for the opposition and the basis for appellees’ priority claims.

Chisena argued that the appellees’ [...]

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Deadlines and discretion: Appeal trips over the clock

by | Jan 15, 2026 |

The US Court of Appeals for the Federal Circuit affirmed in part and dismissed in part an appeal of an International Trade Commission decision. The Federal Circuit affirmed the Commission’s issuance of a limited exclusion order against one set of respondents and dismissed the complainant’s appeal of the Commission’s no‑violation finding against another set of respondents as time‑barred under the statute. Crocs, Inc. v. Int’l Trade Comm’n, Case No. 2024-1300 (Fed. Cir. Jan. 8, 2026) (Stoll, Lourie, Chun, JJ.)

Crocs filed a complaint with the Commission alleging that multiple respondents violated Section 337 by importing, selling for importation, or selling within the US footwear that infringed its registered trademarks (the 3D marks), which are associated with certain features of Crocs’ Classic Clog shoes. Crocs’ complaint requested relief in the form of a general exclusion order (GEO), or in the alternative, a limited exclusion order (LEO). Three respondents participated in an evidentiary hearing before an administrative law judge in September 2022 (active respondents) while four respondents were in default and waived their rights to appear, to be served with documents, and to contest the allegations (defaulting respondents). More than 20 other respondents were terminated based on consent orders or settlement agreements.

In a September 14, 2023, Notice of Final Determination and accompanying opinion, the Commission found no violation by the active respondents, concluding that Crocs had not established likelihood of confusion, infringement, or dilution of the 3D marks. The Commission, presuming the facts alleged in the complaint as true and finding that public interest factors do not preclude relief, also issued an LEO against the defaulting respondents, barring them from importing the infringing shoes.

On December 22, 2023, Crocs filed a notice of appeal challenging the Commission’s no-violation finding as to the active respondents and its decision to issue only an LEO against the defaulting respondents rather than the GEO that Crocs requested. The Commission countered that Crocs’ appeal against the active respondents was time-barred by Section 337(c), which required the appeal to be filed by November 13, 2023, and argued that the Commission did not abuse its discretion in issuing only an LEO against the defaulting respondents.

The Federal Circuit dismissed Crocs’ appeal against the active respondents as untimely. The Court explained that when the Commission issues a single decision that contains a no-violation finding against one set of respondents and enters an exclusion order against another set of respondents, each ruling carries its own deadline for appeal. In this case, Crocs’ December 22, 2023, appeal was time-barred under Section 337(c) because the 60-day period for filing a notice of appeal on the no-violation finding expired on November 13, 2023. The Court also considered and upheld the Commission’s LEO order, concluding that the Commission had articulated a sufficient basis for the remedy and that its decision was not arbitrary, capricious, an abuse of discretion, or otherwise contrary to law.



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Bond order doesn’t qualify for immediate appeal

by | Jan 8, 2026 |

The US Court of Appeals for the Federal Circuit reaffirmed strict limits on interlocutory review, finding that a bond order, even one imposing significant financial obligations, is not directly appealable. Micron Technology, Inc., et al. v. Longhorn IP LLC, Case No. 23-2007; Katana Silicon Technologies LLC v. Micron Technology, Inc., et al., Case No. 23-2095 (Fed. Cir. Dec. 18, 2025) (Lourie, Schall, Stoll, JJ.)

Idaho’s Bad Faith Assertions of Patent Infringement Act allows targets of bad faith patent assertions to seek equitable relief, damages, fees, and punitive damages. It also authorizes courts to require the party asserting patent infringement to post a bond equal to estimated litigation costs and potential recovery.

Micron, a semiconductor manufacturer headquartered in Boise, Idaho, faced infringement claims from Katana Silicon in the Western District of Texas based on three expired patents. Micron counterclaimed under the Idaho act, alleging bad faith. After transfer of the case to the District of Idaho, Idaho intervened to defend the act’s constitutionality. Micron also sued Longhorn IP (alleged to control Katana) in Idaho state court under the act, seeking a $15 million bond. Longhorn removed that case to federal court. Both Katana and Longhorn moved to dismiss on preemption grounds. Both motions to dismiss were denied, and the district court imposed an $8 million bond on Katana and Longhorn pursuant to the act’s bond provision. Katana and Longhorn directly appealed the bond order.

Since there was no final judgment, the threshold question was jurisdiction. Katana and Longhorn raised three theories under which the Federal Circuit had jurisdiction on the direct appeal.

First, Katana and Longhorn argued that jurisdiction existed under 28 U.S.C. § 1292, which provides appellate jurisdiction on interlocutory orders granting, continuing, modifying, refusing, or dissolving injunctions. Katana and Longhorn argued that the bond order was “injunctive in nature” and posed irreparable harm. The Federal Circuit disagreed, concluding that a bond is not an injunction and does not meet the criteria for interlocutory appeal. The Court found that Katana and Longhorn could seek modification or waiver in district court and that no serious hardship or inability to challenge later was shown.

Second, Katana and Longhorn argued that the Federal Circuit had jurisdiction under the collateral order doctrine, which is “a narrow exception whose reach is limited to trial court orders affecting rights that will be irretrievably lost in the absence of an immediate appeal.” To fall under this exception, an order must satisfy at least the following conditions:

  • Conclusively determine the disputed question.
  • Resolve an important issue completely separate from the merits of the action.
  • Be effectively unreviewable on appeal from a final judgment.

The Court concluded that, at a minimum, the second and third conditions were not met. The Court explained that the bond issue was intertwined with the ultimate merits question of the bad faith claims because the same factors that can demonstrate bad faith in the motion to dismiss analysis implicate whether to impose a bond. The Court also explained that nothing prevented Katana [...]

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Direct injection fuel dispute fizzles

by | Jan 8, 2026 |

The US Court of Appeals for the Federal Circuit affirmed three Patent Trial & Appeal Board final written decisions finding claims of three related patents unpatentable as obvious and reiterated that challenges to the Board’s authority to institute inter partes review (IPR) proceedings are largely insulated from appellate review under 35 U.S.C. § 314(d). Ethanol Boosting Systems, LLC, et al. v. Ford Motor Co., Case Nos. 2024-1381; -1382; -1383 (Fed. Cir. Dec. 23, 2025) (Chen, Clevenger, Hughes, JJ.)

Massachusetts Institute of Technology (MIT) owns three related patents directed to fuel management systems for spark-ignition engines, which it exclusively licensed to Ethanol Boosting Systems (EBS). The patents disclose systems using both port fuel injection and direct injection to suppress engine knock by injecting an anti-knock agent, with increasing use of direct injection at higher torque levels.

EBS sued Ford for patent infringement. During claim construction, EBS and Ford disputed the meaning of claim terms related to “direct injection” fuel. EBS proposed the plain and ordinary meaning and no constraints on the term. Ford proposed terms requiring a fuel that is different from fuel used in port injunction systems and contains an anti-knock agent other than gasoline. While claim construction was pending, Ford filed IPR petitions using EBS’s proposed claim construction.

While Ford’s IPR petitions were pending, the district court adopted Ford’s construction and entered summary judgment of noninfringement. EBS appealed, and the Federal Circuit vacated and remanded the district court’s decision. Before the Federal Circuit had decided the appeal, the Board denied institution on all three IPR petitions primarily because it, like the district court, construed the direct injection fuel terms to require fuel different from the fuel used in the port injector. After the Federal Circuit decision, the Board granted rehearing, instituted IPRs, and ultimately found the challenged claims unpatentable as obvious. EBS appealed the Board’s final written decisions.

Institution challenge barred under § 314(d)

EBS argued that the Board acted unlawfully by effectively “staying” its decision on Ford’s rehearing request for more than a year while awaiting the Federal Circuit’s ruling on the district court appeal, and that the resulting institution decisions should therefore be vacated.

The Federal Circuit rejected this argument, finding that it was, in substance, an impermissible challenge to the Board’s institution determinations. The Court explained that § 314(d) bars appellate review not only of institution decisions themselves, but also of challenges “closely related” to those determinations. Characterizing the Board’s delay as an ultra vires “stay” did not change the analysis, particularly since no statutory deadline governed the timing of rehearing decisions and no IPR had yet been instituted.

The Federal Circuit further noted that the narrow exceptions to § 314(d), such as colorable constitutional claims, did not apply because EBS failed to raise a viable due process or other constitutional argument.

Claim construction: District court rulings don’t control

EBS next argued that the Board was bound by the district court’s earlier claim construction (applied during the prior Federal Circuit appeal) requiring a non-gasoline anti-knock [...]

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Equivalents still requires all elements be met, injunctive relief still governed by eBay factors

by | Jan 8, 2026 |

The US Court of Appeals for the Federal Circuit issued a mixed ruling in a dispute over patents covering child car seat technology, explaining that infringement under the doctrine of equivalents requires an equivalent for each and every claim element, and that a grant of injunctive relief requires proof of all eBay factors. On the issue of willfulness, the panel majority held that the exclusion of exculpatory evidence was a reversable error. Wonderland Switzerland AG v. Evenflo Co., Inc., Case Nos. 23-2043; -2233; -2326 (Fed. Cir. Dec. 17, 2025) (Moore, Prost, JJ.) (Reyna, J., concurring in part and dissenting in part).

Wonderland owns two patents directed to convertible child car seats. Wonderland alleged that Evenflo’s four-in-one convertible seat models infringed its patents. A jury found infringement of one patent under the doctrine of equivalents and infringement of the other patent both literally and under the doctrine of equivalents. The district court entered judgment and permanently enjoined Evenflo from activities related to both patents. Evenflo appealed.

Evenflo challenged the finding of infringement under the doctrine of equivalents for the first patent, arguing that its accused seats lacked the claimed “locking mechanism for selectively detachably connecting” the seat back to the seat assembly. The Federal Circuit agreed, finding that no reasonable jury could find equivalence because the claim “plainly requires the seat back to include the components for selective detachability,” whereas Evenflo’s seats “simply include a stationary metal bar” and all locking components reside on the seat assembly. As a result, the Court concluded “there c[ould] be no equivalence as a matter of law.”

Evenflo also argued that the district court abused its discretion in permanently enjoining activities relating to both patents. Regarding the first patent, the Federal Circuit found that the district court abused its discretion in granting a permanent injunction because Wonderland expressly declined to request such relief. Wonderland argued the grant of a permanent injunction as to the first patent was harmless error because it had the same “practical effects” as the injunction for the second patent. The Court disagreed, explaining that the injunction could affect Evenflo’s release of other products, which may not necessarily infringe the second patent.

Regarding the second patent, the Federal Circuit concluded that the district court abused its discretion in granting a permanent injunction because it relied solely on speculative and conclusory evidence that Wonderland suffered, and would continue to suffer, irreparable harm or injury that could not be compensated with monetary damages. The Court explained that the district court failed to identify evidence that Wonderland’s partner lost sales or market share to Evenflo rather than other competitors, or that the partner’s reputation or product distinctiveness was harmed. The Court also noted that testimony that a lost car seat sale “naturally leads” to loss of other product sales was based on conjecture without supporting data. Finally, the Court found that statements that consumers “might think” technology problems existed if Evenflo’s product failed were deemed speculative and insufficient to establish irreparable harm.

Wonderland cross-appealed, asserting [...]

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Coffee, tea, or doctrine of foreign equivalents?

by | Dec 18, 2025 |

The US Court of Appeals for the Federal Circuit reversed a Trademark Trial & Appeal Board decision upholding refusal of the KAHWA mark for cafés and coffee shops, holding that the doctrine of foreign equivalents was inapplicable since KAHWA has a well-established alternative English meaning. In re Bayou Grande Coffee Roasting Co., Case No. 2024-1118 (Fed. Cir. Dec. 9, 2025) (Moore, Hughes, Stoll, JJ.)

In February 2021, Bayou applied to trademark KAHWA for cafés and coffee shops, claiming use since 2008. The examiner refused, deeming the mark generic or descriptive under the doctrine of foreign equivalents, asserting that KAHWA means “coffee” in Arabic. Bayou argued that it instead refers to a specific type of Kashmiri green tea not sold in US cafés or coffee shops. The examiner upheld refusals on both grounds and denied reconsideration.

On appeal, the Board affirmed the examiner’s refusals based on the Kashmiri green tea meaning but did not address the Arabic meaning. The Board found KAHWA generic and descriptive for cafés and coffee shops due to record evidence showing relevant customers regarded KAHWA as the generic description for a type of green tea beverage, and cafés and coffee shops serve a variety of tea beverages. Bayou appealed.

The Federal Circuit first determined that the Board’s generic and merely descriptive findings based on the Kashmiri green tea meaning did not constitute new grounds of rejection. The Court also reversed the Board’s generic and merely descriptive findings based on the Kashmiri green tea meaning.

The Federal Circuit concluded that the Board’s generic finding was not supported by substantial evidence because of undisputed evidence that no café or coffee shop in the United States sells kahwa. Therefore, whether relevant customers understood KAHWA to refer to a specific type of Kashmiri green tea was insufficient to establish genericness. The Court also held that the Board’s merely descriptive finding was not supported by substantial evidence because kahwa is neither a product/feature of café and coffee shop services nor a tea variety typically offered there. Moreover, registering KAHWA would not grant Bayou rights against cafés or coffee shops merely selling kahwa, and potential future sales were irrelevant to the descriptiveness analysis.

Finally, the Federal Circuit held that because KAHWA’s undisputed English meaning is Kashmiri green tea, translation was unnecessary, and the doctrine of foreign equivalents did not apply. Under the doctrine of foreign equivalents, a foreign mark may be translated into English to evaluate it for genericness or descriptiveness. However, translation is not required when consumers would not translate, or when the mark has a well‑established alternative meaning that makes the literal translation irrelevant.



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Authentication approved: § 314(d) doesn’t bar review of IPR petition scope

by | Dec 18, 2025 |

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board inter partes review (IPR) decision, finding that:

  • § 314(d) does not bar review of an IPR petition’s scope.
  • Substantial evidence supported the Board’s findings that the prior art taught the disputed limitations.
  • The Board correctly distinguished similar but different claim elements.

International Business Machines Corp. v. Zillow Group, Inc., Case Nos. 24-1170; -1274 (Fed. Cir. Dec. 9, 2025) (Chen, Taranto, Stoll, JJ.)

IBM holds a patent related to systems and methods for single sign-on (SSO) operations, enabling users to create and access multiple accounts using a single set of login credentials. Rakuten petitioned for IPR, asserting an anticipation challenge under § 102 and three obviousness challenges under § 103. The Board instituted review and addressed three claim limitations central to the dispute.

The Board first addressed the “protected resources” limitation. It adopted IBM’s construction requiring URLs or URIs and ultimately found the anticipation challenge unmet, but not because Sunada prior art failed to disclose the limitation. Instead, Rakuten (the original IPR petitioner) expressly abandoned its § 102 anticipation ground at oral argument, and afterward the Board found that Rakuten had not carried its burden. However, the Board agreed that a prior art reference nonetheless satisfied the limitation because the Board concluded that a skilled artisan would understand Sunada’s express disclosure that “web applications” be identified by conventional URLs or URIs.

Next, the Board construed “identifier associated with the user” to mean information that uniquely identifies a user, adopting IBM’s preferred construction. The Board found that the prior art reference disclosed this limitation through its use of a “User ID.”

Finally, the Board determined that Rakuten failed to establish that the asserted prior art taught the limitation requiring the second system to send a request message to a first system “in response to a determination” during user account creation. The prior art disclosed sending such a request only to the user’s own computer (not to the first system) when additional user information was needed.

The Board held several challenged claims unpatentable and others not unpatentable based on the asserted prior art. IBM appealed regarding all the claims the Board found unpatentable, contending that the Board’s analysis of “protected resources” relied on a theory of patentability not raised in the reward company’s petition, and that the Board’s findings on “identifier associated with the user” lacked substantial evidence. Zillow cross-appealed with respect to all claims the Board held not unpatentable, arguing that the Board’s findings lacked substantial evidence.

The Federal Circuit affirmed the Board on both appeals. First, responding to Zillow’s reviewability challenge, the Court held that § 314(d) did not bar review of whether the Board stayed within the petition’s grounds. The Court explained that while institution decisions are unreviewable, courts routinely examine whether the final written decision relies on theories actually presented in the petition. Zillow argued that because IBM’s challenge was “closely tied” to the Board’s institution decision, § 314(d)’s bar on [...]

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Game plan backfires: Mark cancelled

by | Dec 18, 2025 |

The US Court of Appeals for the Federal Circuit affirmed the Trademark Trial & Appeal Board’s cancellation of a registration and dismissal of registrant’s opposition, finding that the cancellation petitioner had priority through a valid assignment of common law rights. Game Plan, Inc. v. Uninterrupted IP, LLC, Case No. 24-1407 (Fed. Cir. Dec. 10, 2025) (Reyna, Prost, Cunningham, JJ.)

Game Plan obtained a federal registration in 2018 for the stylized mark I AM MORE THAN AN ATHLETE. GP GAME PLAN covering charitable fundraising via t-shirt sales. Uninterrupted IP (UNIP) subsequently filed six intent-to-use (ITU) applications for marks incorporating I AM MORE THAN AN ATHLETE and MORE THAN AN ATHLETE for clothing and entertainment services. Game Plan opposed the ITU applications, asserting likelihood of confusion and priority under § 2(d) of the Lanham Act, and claimed common law rights in support of its opposition. UNIP denied any likelihood of confusion and counterclaimed to cancel Game Plan’s registration, asserting priority based on common law rights in MORE THAN AN ATHLETE that UNIP acquired through a 2019 asset purchase agreement (executed after Game Plan filed its Notice of Opposition) from More Than an Athlete (MTAA), which had used the mark since at least 2012, and MTAA’s founder.

The Board dismissed Game Plan’s opposition because it submitted no evidence during its trial period, explaining that Game Plan could not sustain its § 2(d) claims based on common law rights alone. The Board also found that UNIP had acquired valid and enforceable common law rights in the mark from MTAA and its founder and therefore held that UNIP had priority based on the 2019 assignment. Game Plan appealed.

Game Plan argued that the assignment was an invalid “assignment in gross” and violated 15 U.S.C. § 1060(a)(1) and 37 C.F.R. § 2.133(a). The Federal Circuit concluded that the assignment was not in gross because:

  • It expressly transferred “all of the goodwill of this business related to” the mark.
  • UNIP’s subsequent use was substantially similar to the assignor’s use.
  • The assignor remained engaged as a consultant, supporting continuity of goodwill.

The Federal Circuit further held that § 1060(a)(1) did not apply because UNIP did not assign its pending ITU applications. Rather, it received an assignment of existing common law rights to a mark in use. Likewise, the Court found that § 2.133(a) did not bar the Board’s priority determination because the Board relied on UNIP’s independent common law rights, which independently predated Game Plan’s filing date, rather than any amendment to UNIP’s application.

The Federal Circuit also affirmed the Board’s refusal to consider Game Plan’s evidence, noting that Game Plan was advised of the proper procedures for submitting evidence at trial but failed to follow those procedures. Game Plan attempted to rely on materials attached to its motion for summary judgment that were not reintroduced into evidence during the testimony period as required by Board rules. The Court concluded that the Board acted within its discretion to exclude the evidence not submitted during the designated [...]

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