Posts in IP News

Alden Abbott recently captured Europe’s digital-policy contradiction with a memorable image: Brussels says it wants technology champions, but when a champion emerges, it makes the winner share the trophy. The European Commission’s July 16 binding specification measures (BSMs) against Google turn that metaphor into an administrative program. One measure requires Google to provide eligible search engines—including AI chatbots with search functions—access to anonymized ranking, query, click, and view data. The other requires “free and effective” interoperability with 11 categories of Android functionality, including device sensors, app context, app and operating-system control, on-device AI models, and background execution. Google must furnish documentation and technical assistance and extend access to covered future functionality when it becomes available to its own services.

This week in Other Barks & Bites: the Second Circuit affirms a ruling that copyright infringement claims against artist Jeff Koons were time-barred; the Federal Circuit reverses-in-part a Section 101 ruling invalidating patent claims to systems for distributing picture mail; the EU Commission fines Google €890 million for self-preferencing and steering violations under the Digital Markets Act; and more.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision today affirming in part and reversing in part a district court ruling that had found four patents covering digital picture frame technology ineligible under 35 U.S.C. Section 101. The court remanded one patent claim to the U.S. District Court for the Central District of California for further proceedings and affirmed the ineligibility finding as to the remaining three patents at issue.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Thursday granted motions to dismiss as moot two appeals from an International Trade Commission (ITC) determination in which the ITC found Cartessa Aesthetics LLC violated Section 337 via infringement of Hydrafacial LLC’s patent, but suspended enforcement of an exclusion order because the patent was about to expire. The CAFC also vacated the underlying ITC determination.

ECI Innovations, LLC, a company that designs and licenses financial products, is seeking an experienced intellectual property professional to join the company as a Partner on a part-time, permanent basis. This is a remote opportunity. The successful candidate will assist with filing patents for a proprietary financial benchmark product and provide legal guidance related to licensing the company’s intellectual property. Due to the confidential nature of the project, additional details will be shared with qualified candidates.

The U.S. Patent and Trademark Office (USPTO) today published a Federal Register Notice proposing to amend the rules of practice to require that third-party requests for ex parte reexamination of a patent must include a statement identifying all real-parties-in-interest (RPIs) to the proceeding. According to the proposed rule, statements identifying RPIs would be kept confidential upon request and “would provide the Office with a mechanism to evaluate statutory estoppel provisions” as well as “enhance the Office’s ability to respond to false certifications, misrepresentations, and fraud.”

The U.S. Court of Appeals for the Ninth Circuit in Comet Technologies USA, Inc. v. XP Power, LLC, overturned Comet Technologies’ $40 million trade secret verdict against XP Power and ordered a new trial, finding that the district court erroneously instructed the jury that the defendant bore the burden of proving that Comet’s trade secrets were readily ascertainable by proper means. The court held that the error was not harmless because the instructions were not accurate as a whole, and nothing in the jury’s verdict shed light on how it would have ruled under a correct instruction. The case is notable both for clarifying what “readily ascertainable” means and for spotlighting a burden-of-proof distinction between the Defend Trade Secrets Act (DTSA) and the California Uniform Trade Secrets Act (CUTSA) that practitioners should not overlook.

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision today affirming a district court’s dissolution of a preliminary injunction (PI) and denial of a temporary restraining order (TRO) in a Schedule A design patent dispute over foldable fans. Circuit Judge Hughes wrote for the majority, joined by Circuit Judge Prost, while Circuit Judge Stoll dissented from the portion of the opinion addressing the merits of the design patent analysis.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday vacated and remanded a decision for a patent owner against Apple, concluding that the Patent Trial and Appeal Board (PTAB) made several errors in finding the claims of the speech recognition patent at issue were not shown to be unpatentable. Zentian Ltd. owns U.S. Patent No. 10,839,789, which is titled “Speech recognition circuit and method.” Apple petitioned for inter partes review (IPR) of multiple claims of the patent, arguing in relevant part that “claim 1 was obvious over prior art reference U.S. Patent No. 5,819,222 (“Smyth”) or the combination of Smyth and U.S. Patent No. 6,832,194 (“Mozer”) and that claim 29 was obvious over Smyth, Mozer, and several other references.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a decision today in Woodway USA, Inc. v. LifeCore Fitness, Inc., vacating a grant of summary judgment of noninfringement in favor of LifeCore Fitness, doing business as Assault Fitness. The court found that the U.S. District Court for the Southern District of California relied on an overly restrictive claim construction, vacating and remanding the decision for further proceedings.

Recent amendments to Federal Rule of Evidence 702 did not invent the trial judge’s gatekeeping obligation, nor did they transform economic analysis. They did, however, sharpen the focus on the burden of establishing admissibility and whether an expert has reliably applied a valid methodology to the facts. Combined with the Federal Circuit’s increasingly demanding review of patent damages opinions, the practical message is unmistakable: the economic case must be engineered from the beginning, or you will surely suffer the consequences only after it is too late.

On December 31, 1959, Calixto Lopez led armed men into the Arechabala family’s rum distillery in Cárdenas, Cuba. The family had made rum there since 1878, building Havana Club into a brand whose English name reflected its success in the U.S. market. According to testimony Ramón Arechabala gave the Senate Judiciary Committee in 2004, Lopez pointed a machine gun at him and announced he was taking over as “Pepe,” the nickname of the company’s president and Ramón’s uncle. The family’s rum business now belonged to the Cuban government.

On Friday, the Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision invalidating claims of Woodway’s treadmill patent after rejecting the patentee’s central argument that the Board had improperly construed the claim term ‘running surface.’

Enanta Pharmaceuticals v. Pfizer has been widely characterized as a case that turns on the acceptance or rejection of an alleged typographical error in a provisional patent application. That characterization is inaccurate. The alleged typographical error is a distraction that obscures the fact that the U.S. Court of Appeals for the Federal Circuit analyzed the case under the wrong legal framework. Properly understood, Enanta is not about a typo at all; rather, the dispositive question is whether the inventors possessed the invention prior to the public disclosure of the allegedly infringing compound.