Posts Tagged: "Apple"

On August 18, the owner of the APPLE JAZZ trademark filed an opposition to Apple’s motion to amend its trademark application for the mark APPLE MUSIC with the Trademark Trial and Appeal Board (TTAB). In its motion, the tech giant asked the TTAB to allow the company to remove “live performance services, as well as related services,” from the application. In July, the U.S. Court of Appeals for the Federal Circuit (CAFC) denied Apple’s request to rehear a decision that effectively canceled the tech company’s application to register the APPLE MUSIC mark.

Following years of infringement litigation over its patented wireless chip technologies, the California Institute of Technology (Caltech) has recently enjoyed a pair of settlement outcomes pointing to the strength of the research university’s patent holdings. The accused technologies in those cases overlap with other Caltech patent suits currently pending, which could presage further settlements recognizing the value of the university’s R&D activities.

On August 1, Apple filed a motion to amend its trademark application for the mark APPLE MUSIC with the Trademark Trial and Appeal Board (TTAB) following its recent loss at the U.S. Court of Appeals for the Federal Circuit (CAFC). Apple is asking the TTAB to allow it to remove “live performance services, as well as related services,” from the application in order to get around the CAFC’s ruling and since the Opposer, Charles Bertini, did not make the argument on which the ruling was based before the TTAB.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied Apple’s June request that the court rehear a decision that effectively canceled the tech company’s application to register the trademark APPLE MUSIC. Apple had asked the court to rehear the case in order to direct the Trademark Trial and Appeal Board (TTAB) to narrow the services listed in the trademark application so that it could proceed to registration. The owner of the trademark for APPLE JAZZ, Charles Bertini, in April won his appeal to the CAFC from the TTAB, which had dismissed his opposition to Apple, Inc.’s application to register the mark APPLE MUSIC. The CAFC said the TTAB legally erred in allowing Apple to claim absolute priority for all of the services listed in its application based on a showing of priority for just one service.

A UK judge in May determined in a non-public judgment that has been widely reported on that Apple should pay Optis a total of $56.43 million plus interest for a worldwide FRAND license to Optis’s portfolio of 4G standard essential patents (SEPs). In the most recent development in the overall case, Apple yesterday reportedly lost its appeal in one of the four technical trials pending between the parties, meaning it could still be liable for fees related to infringement in the range of $7 billion.  

The U.S. Supreme Court denied the petitions for certiorari in a number of IP cases today, including three the U.S. Solicitor General had recommended rejecting. In Genius v. Google, ML Genius Holdings (Genius) attempted to sue Google for posting song lyrics from its website in Google search results. Genius’s petition asked the High Court to answer the question of whether the Copyright Act’s preemption clause allows a business “to invoke traditional state-law contract remedies to enforce a promise not to copy and use its content?”

Last week, Apple filed a petition for the U.S. Court of Appeals for the Federal Circuit (CAFC) to rehear a decision that effectively canceled the tech giant’s application to register the trademark APPLE MUSIC. The petition asks the court to rehear the case in order to direct the Trademark Trial and Appeal Board (TTAB) to narrow the services listed in the trademark application so that it can proceed to registration.

The owner of the trademark for APPLE JAZZ has won his appeal from the Trademark Trial and Appeal Board (TTAB), which dismissed his opposition to Apple, Inc.’s application to register the mark APPLE MUSIC. The U.S. Court of Appeals for the Federal Circuit (CAFC) said the TTAB legally erred in allowing Apple to claim absolute priority for all of the services listed in its application based on a showing of priority for one service. Apple filed Trademark Application No. 86/659,444 for APPLE MUSIC, which the company has been using since 2015, when it launched its music streaming service. Charles Bertini, the owner of APPLE JAZZ, registered his mark in New York state in 1991 for entertainment services but began using the mark well before that, in 1985. Unaware that he did not have a federal registration, Bertini filed an opposition against Apple, Inc.’s federal registration for APPLE MUSIC in 2016, along with an application to register APPLE JAZZ with the USPTO.

The U.S. Court of Appeals for the Federal Circuit on Thursday upheld two Patent Trial and Appeal Board (PTAB) decisions finding VirnetX’s patent claims unpatentable in inter partes review (IPR) challenges brought by Apple, Inc. and Mangrove Partners. The dispute relates to VirnetX’s U.S. Patent Nos. 6,502,135 and 7,490,151, which are directed to a “secure mechanism for communicating over the internet.” Mangrove Partners challenged several claims of the ‘135 patent at the PTAB, alleging they were anticipated by a 1996 article authored by Kiuchi and Kaihara

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled today in a split precedential decision authored by Judge Reyna that a district court properly found Personalized Media Communications’ (PMC) patent unenforceable due to prosecution laches. Judge Stark dissented, arguing that, although he agreed PMC’s delay in prosecuting its patent was “unreasonable and inexcusable,” Apple failed to establish that it suffered prejudice during the period of delay. PMC sued Apple in the U.S. District Court for the Eastern District of Texas in 2015, alleging that Apple’s digital rights management software, FairPlay, infringed claim 13 of PMC’s U.S. Patent No. 8,191,091. A jury found that Apple infringed at least one of claims 13-16, but in a subsequent bench trial the district court found that the patent was unenforceable due to prosecution laches under Hyatt v. Hirshfeld.

The U.S. International Trade Commission on Tuesday issued a Notice of Final Initial Determination (FID) finding that Apple violated Section 337 of the Tariff Act of 1930 by importing and selling in the United States Apple Watches with light-based pulse oximetry technology that infringed claims 24 and 30 of Masimo’s U.S. Patent No. 10,945,648. According to a Masimo press release, Apple first started selling the Apple Watch with a pulse oximeter sensor in 2020 and has continued to use it in subsequent versions of the product since then. The ITC Notice said it found no violation of the asserted claims of four other patents named in Masimo’s complaint.

While 2022 was somewhat less eventful than 2021 in terms of significant developments in fair/reasonable and non-discriminatory (FRAND/RAND) licensing occurring in the United States, the past year still did not disappoint and underscores the continued and growing interest from government in the standards related patents space. In 2022, the most progress was made on matters and issues we wrote about last year: i.e. government policy developments, Continental v. Avanci, the IEEE’s standards-related Patent Policy, and Ericsson v. Apple / Apple v. Ericsson  (see here and here)

The U.S. Court of Appeals for the Federal Circuit (CAFC) today said in a precedential order that Judge Alan Albright’s Scheduling Order in a case between Aire Technology Limited and Apple, Inc. went too far in mandating additional substantive discovery and re-briefing that would result in nearly a year passing before the court rules on Apple’s venue transfer motion. Apple asked the U.S. District Court for the Western District of Texas in April 2022 to transfer Aire’s patent infringement case against it to the Northern District of California. Apple filed declarations during venue discovery to support the need for transfer, including a request to supplement its motion with additional declarants just prior to the close of venue discovery, and offered to make the declarants available for deposition and to extend the transfer proceedings for a “reasonable” amount of time.

In the latest episode of IP Practice Vlogs, we will explore design patents, which protect the ornamental features of a functional item. Apple’s AirPods are functional but have a distinctive look that is identifying of its brand and maker, making them a great subject. The first thing you do when patenting anything, including a design, is to decide the scope of your claim. In design patents, your scope is determined by what you claim, what you show and what you describe. Claimed features are depicted by solid lines. Dashed lines depict unclaimed features that provide environmental context for your claimed features that are in solid lines.

“For 200 years, the world was getting along just fine without a policy statement on SEPs [standard essential patents],” said Andrei Iancu earlier this week at Patent Litigation Masters™ 2022, discussing Biden Administration attempts to revisit the 2019 SEP policy agreement among the U.S. Patent and Trademark Office (USPTO), National Institute of Standards and Technology (NIST) and Department of Justice (DOJ). “Standard essential patents are patents too… the regular rule of law should apply.” Iancu, former USPTO Director, and current partner at Irell & Manella, went on to say that the real goal of those constantly chipping away at patent rights is simple: “Weaken patents so that the big entities can have freer reign to get bigger, to infringe patents in a less encumbered way.”