Three law school faculty and students filed an amicus brief earlier this week urging the U.S. Supreme Court to reverse a trademark decision of the U.S. Court of Appeals for the Seventh Circuit regarding the legal standard for trademark confusion. The brief asks the Court to “end the contradiction and confusion” around the different approaches taken to the likelihood of confusion analysis by federal courts.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today held that certain claims of a patent for a system to protect against identity theft and fraud were invalid for indefiniteness. Judge Schall dissented-in-part, explaining that he would not have found the claims indefinite based on the intrinsic evidence. U.S. Patent No. 9,361,658 is owned by Mantissa Corporation and is titled “System and Method for Enhanced Protection and Control Over the Use of Identity.” Mantissa sued First Financial Corporation and First Financial Bank, N.A. in the U.S. District Court for the Northern District of Illinois, alleging infringement of certain claims. The parties mainly disputed two terms during claim construction: (1) “transaction partner” and (2) “OFF.” The district court relied on First Financial’s expert testimony to conclude that “transaction partner” was indefinite, after finding that the expert used was a person of ordinary skill in the art (POSA).

On February 12, the Mechanical Licensing Collective (MLC) filed a lawsuit against streaming music company Pandora Media in the Middle District of Tennessee seeking unpaid royalty fees for blanket licenses under the Music Modernization Act (MMA). The case, prompted by recent final determinations on blanket license royalty rates, could prove an interesting test case on the level of interactivity and personal control required before a streaming service qualifies as a covered activity under the MMA.

Fashion is a brand-driven industry, and few brands in the fashion space carry the same cachet as Chanel. But how much control do brands like Chanel have over merchants who resell name-brand items in the secondary market? The answer, according to a federal jury in the Southern District of New York, is “Quite a bit.” The jury awarded Chanel $4 million in statutory damages on Chanel’s claims of trademark infringement, false association, unfair competition, and false advertising related to What Goes Around Comes Around’s (WGACA) reselling and marketing of Chanel products. The plaintiffs prevailed on all claims.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today said in a precedential decision that the U.S. Patent and Trademark Office (USPTO) did not need to engage in notice-and-comment rulemaking to require trademark applicants and registrants to provide a physical street address with their trademark applications. The court took the case as an opportunity to directly address “when a rule is procedural and excepted from notice-and-comment rulemaking as a ‘rule[] of agency organization, procedure, or practice.’”

Is your company paying the United States Patent and Trademark Office (USPTO) maintenance fees for expired patents? The USPTO requires payment of maintenance fees to keep a granted patent in force due at 3.5 years, 7.5 years, and 11.5 years after the date of grant of a patent. For 2023, these fees amount to $2,000, $3,760, and $7,700, respectively. You may be unknowingly paying maintenance fees for expired patents.

The year 2023 marked another year of rapid advancements in quantum computing technology, showcasing significant progress in key areas such as scalable quantum computing and quantum error correction. Multiple physical realization approaches or modalities for creating quantum bits (qubits) are under development, offering different tradeoffs in performance metrics such as qubit count, error rate, decoherence time, and gate speed. Patenting activities are effective indicators of innovation speed and resource distribution in a technology field. As 2024 begins, this post explores the newest development focus and trends in the quantum computing industry through the angle of its patent landscape and discusses strategic considerations for patenting in this rapidly evolving field.

Arnold & Porter is seeking an Engineering Patent Agent for the Intellectual Property practice group. This position is full-time and permanent, and may be located in the following offices: Boston, Chicago, Denver, Houston, Los Angeles, New York, San Francisco, Silicon Valley, or Washington DC. The Patent Agent works with Patent Attorneys to secure patents by preparing, filing, and prosecuting applications involving new inventions with the U.S. Patent & Trademark office.

On February 12, the U.S. District Court for the District of Columbia denied a motion for preliminary injunction filed by Circuit Judge Pauline Newman, who has been at the center of a controversial inquiry into her current fitness to continue serving as a federal appellate judge. Despite acknowledging that all of the recent complaints against Judge Newman’s mental fitness continue to be unsubstantiated, the D.C. district court determined that most of Judge Newman’s requested relief was foreclosed by legal precedent limiting constitutional challenges to the Judicial Conduct and Disability (JC&D) Act. However, the court said it maintains jurisdiction over three of the 11 counts, and part of another, brought by Newman.

The U.S. Patent and Trademark Office (USPTO) today released guidance for determining inventorship of artificial intelligence (AI)-assisted inventions. As the Office has previously stated, the guidance clarifies that “while AI-assisted inventions are not categorically unpatentable, the inventorship analysis should focus on human contributions, as patents function to incentivize and reward human ingenuity.” The USPTO issued a call for comments on AI inventorship in February 2023. That Federal Register Notice (FRN) asked the public to respond to 11 questions, including “how does the use of an AI system [in the invention process]…differ from the use of other technical tools”; whether AI inventions may be patentable under current patent laws on joint inventorship by, for example, simply listing the natural person involved in inventions created by AI machines; and whether statutory or regulatory changes should be made to better address AI contributions to inventions.

The importance and profitability of diversity are already well-known by companies. Research conducted by McKinsey & Company shows that in 2019 companies in the top quartile for gender diversity on executive teams were 25% more likely to have above-average profitability than companies in the fourth quartile. However, when we look at diversity in the patent sphere, a report published by the World Intellectual Property Office (WIPO) showed that, in 2021, women accounted for only 16.5% of all inventors listed in Patent Cooperation Treaty (PCT) applications.

On February 8, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Weber, Inc. v. Provisur Technologies, Inc. that vacated rulings by the Patent Trial and Appeal Board (PTAB) nixing validity challenges by American grill maker Weber against Provisur’s commercial food slicer patent claims. The Federal Circuit reversed the PTAB on claim construction and also found that the Board misapplied CAFC precedent on the level of public dissemination required before printed publications can qualify as prior art.

This week in Other Barks and Bites: the CAFC revives a food slicer patent dispute and partially vacates the Patent Trial and Appeal Board on written description in two precedential rulings; DraftKings accuses a former executive of stealing trade secrets and heading to a rival gambling company ahead of the Super Bowl; and a German patent court issues and injunction that could limit some HP and Dell products from being sold in the country.

For many legal professionals, artificial intelligence platforms are being adopted at a speed that they think is imprudent. Well-respected patent and intellectual property thought leaders have been very open about their concerns on this point. From client confidentiality to patentability, risks posed by the use of generative AI systems must be eliminated by AI companies themselves before they partner with the patent law profession.

The U.S. Senate Committee on Health, Education Labor & Pensions held a hearing today on why the United States pays “by Far, the Highest Prices in the World for Prescription Drugs.” Patents came up throughout the hearing as one barrier to lowering prescription drug prices, while pharmaceutical industry representatives underscored the cost of bringing innovative and life-saving drugs to market and the superior access Americans have to such drugs compared with other countries.