Litigation – Page 8 – IP Law Watch

Frucor given red card over ‘V’ green trade mark

Jul 22 2018

On 2 July 2018 the Federal Court of Australia dismissed Frucor Beverages Ltd’s appeal regarding the registrability of the colour Pantone 376C with respect to the energy drink ‘V’.

The Frucor mark in question, Australian trade mark no. 1496541, was first filed with IP Australia on 5 June 2012. Registration of this mark was opposed by the Coca Cola Company on two grounds. First, Coca Cola alleged that while the trade mark was filed for Pantone 376C, the swatch attached to the application that visually demonstrated the colour was not actually Pantone 376C. Furthermore, it argued that regardless of the colour actually filed, it was not capable of distinguishing Frucor’s goods from other similar goods and services. The Registrar of Trade Marks dismissed the first ground of opposition but supported the second and the registration was denied.

Australian liquor company may not get off scot(ch) free

Jul 13 2018

Proceedings recently commenced in the Federal Court of Australia by the Scotch Whisky Association (SWA) serve as a reminder of the ability to use the trade mark system to protect Geographical Indications (GIs) in Australia. The use and protection of GIs in Australia will be of particular interest to followers of the Australian-European Union free trade negotiations, where GIs have been flagged by the European Union as a critical issue.

Getting closer to put the UPC into force

Apr 26 2018

April 26, 2018 is a remarkable date: first it’s World IP Day celebrating IP around the world. Second, and this is unique, the British IP Minister Sam Gyimah MP announced that the UK ratified the Unified Patent Court Agreement (UPC Agreement). By doing so the UK agreed to be bound to both the UPC agreement and the UPC’s Protocol on Privileges and Immunities (PPI). The UPC will be a court common to the contracting member states within the EU having exclusive competence in respect of European Patents and European Patents with unitary effect.

Designing aftermarket auto parts: exhausting design patent rights

Feb 23 2018

The Automotive Body Parts Association (ABPA) brought a declaratory judgement action against Ford Global Technologies (Ford), the holding company for much of Ford Motor Company’s patent portfolio. ABPA argued that design patents are inappropriate for auto-body parts and, in the alternative, that Ford’s design patents were unenforceable against the members of ABPA because the patent rights had exhausted upon the first sale of the vehicle. (Automotive Body Parts Association v. Ford Global Technologies, LLC, Case No. 2:15-cv-10137 (E.D. MI Feb. 20, 2018).) The Court held that Ford’s designs for their vehicle components were indeed eligible for patent protection and further that the design patent rights were not exhausted when the vehicle was first sold. Id. at 2.

Petitioners bear the burden of proving invalidity of amended claims in IPR proceedings

Oct 05 2017

On October 4, 2017, the Federal Circuit held en banc that the proper interpretation of 35 U.S.C. 316(d) and (e) requires the Petitioner in an inter partes review (IPR) to prove all propositions of unpatentability, including for amended claims. Aqua Prods., Inc. v. Matal, No. 2015-1177 (Fed. Cir. Oct. 4, 2017). The en banc Court further determined that the PTAB must consider the entirety of the record when assessing the patentability of amended claims under 318(a), not merely the face of a motion to amend.

The Aqua case resulted in five opinions totaling 148 pages, each presenting views on judgment and underlying rationale, ultimately leading to a narrowly tailored holding. In the decision, the Federal Circuit made clear that the burden of persuasion of patentability does not rest with the Patent Owner; instead, it is left to the Petitioner to establish that any proposed amended claims are not patentable.

Emerging trends in U.S. Defend Trade Secrets Act litigation

Sep 25 2017

U.S. Congress created the first statutory private federal cause of action for trade secret misappropriation when it enacted the Defend Trade Secrets Act (DTSA) on May 11, 2016. Now, more than a year since its enactment, the DTSA is being shaped and interpreted by various federal court decisions and enforcement trends are emerging.

U.S. Court finds Adidas’ Stan Smith shoe trade dress protectable

Aug 22 2017

It’s game, set, match for Adidas when it comes to the protectable trade dress in its iconic Stan Smith tennis shoe. In a dispute between Adidas and Skechers over the “Skecherizing” of the Stan Smith shoe, the District Court for the District of Oregon denied Skechers’ motion for summary judgment finding that Adidas could show it has protectable trade dress in its well-known shoe design because the design was recognizable to consumers and not functional. Adidas America Inc. et al. v. Skechers USA Inc., D. Or (August 3, 2017) (order granting in part and denying in part motion for summary judgment).

UK to introduce new Unjustified Threats Bill across IP law

Aug 16 2017

The United Kingdom’s new Intellectual Property (Unjustified Threats) Act 2017 (the Act) was recently granted royal assent and is set to come into force in October 2017. The Act should make it easier to advise clients, avoid litigation and facilitate the negotiation of settlements by outlining what types of threats are unjustified. The Act will also harmonise the UK law on unjustified threats across patents, trade marks and design rights.

Currently, the law allows those accused of infringing intellectual property to sue for damages if threats of legal action against them are revealed to be groundless. This can lead to rights-holders becoming wary of challenging perceived threats to their intellectual property because they do not want to risk their threats being perceived as groundless and, as a result, do not exercise full protection of their intellectual property rights.

Supreme Court to Consider Constitutionality of PTAB Proceedings

Jun 14 2017

On June 12, 2017, the U.S. Supreme Court granted Oil States Energy Services, LLC’s petition for a writ of certiorari to address the following question: “Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.” The Supreme Court declined to grant certiorari on Oil States’ remaining two questions presented, relating to amendment procedures and claim construction.

Oil States’ argument is that patents are private property rights that can only be revoked by an Article III court, not by an Article I agency. In particular, Oil States urges the Supreme Court to overturn the Federal Circuit’s decision in MCM Portfolio LLC v. Hewlett-Packard Co., which held that patents are public rights and that “Congress has the power to delegate disputes over public rights to non-Article III courts.”[1] The Federal Circuit has already upheld the constitutionality of the PTO’s ex parte reexamination process in Patlex Corp. v. Mossinghoff.[2] In doing so, consistent with MCM, the Federal Circuit affirmed the power of an Article I agency to adjudicate the validity of an issued patent in the first instance.[3]

The Supreme Court previously rejected three other petitions challenging the constitutionality of Patent Trial and Appeal Board (“PTAB”) proceedings. And, as recently as last month, the same issue was presented for en banc review to the Federal Circuit, which declined to review in a 10–2 vote.[4] Accordingly, this case will present the first opportunity for the Supreme Court to consider the constitutionality of the immensely popular post-grant proceedings put in place by the America Invents Act. The case also presents interesting issues regarding a patentee’s right to a jury trial under the Seventh Amendment.

Updates to this alert will be provided as they become available.

[1] 812 F.3d 1284, 1289 (Fed. Cir. 2015).

[2] 758 F.2d 594 (Fed. Cir. 1985).

[3] Id. at 604.

[4] Cascades Projection LLC v. Epson Am., Inc., No. 2017-1517, slip op. at 2 (Fed. Cir. May 10, 2017).

By: Jason Engel, Devon Beane and Erik Halverson

Coming Home? Part Two: Federal Circuit Denies Mandamus Petition Seeking Clarity on Waiver Issues Post-TC Heartland

Jun 13 2017

This legal alert is a follow-up to “Coming Home?: Federal Circuit Asked to Immediately Weigh in on Proper Venue Post-TC Heartland,” available here.

On the morning of June 9, 2017, the defendants in Cobalt Boats, LLC v. Sea Ray Boats, Inc., filed their Mandamus Petition seeking immediate review of the district court’s decision to deny their request to transfer venue. [1] The defendants also renewed their emergency motion to stay the proceedings pending Federal Circuit review. The Federal Circuit denied both requests late in the afternoon the same day. The Federal Circuit did not weigh in on any of the substantive issues regarding waiver of venue challenges, but rather determined that mandamus relief was not the appropriate recourse in this instance. [2]

As with the previous denial of the defendants’ emergency motion to stay, Judge Newman dissented from the opinion. Judge Newman again reiterated that “[t]here is little doubt that the Court’s decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, No. 16-341, 2017 WL 2216934 (U.S. May 22, 2017), was a change in the law of venue . . .” [3] Judge Newman also opined that the case presented exceptional circumstances warranting mandamus review because “if the trial commences next Monday as scheduled, the landscape will have changed dramatically—without a stay, the event will be over, and an opportunity for this court to determine whether the district court’s decision was in compliance with the venue requirements revived by TC Heartland may have harsh consequences.” [4]

The district court in the underlying litigation is set to begin trial today.

Notes:
[1] No. 15-cv-21 (E.D. Va.).

[2] In re Sea Ray Boats, Inc., No. 17-124, Dkt. No. 15 at 2 (Fed. Cir. June 9, 2017).

[3] Id. at 5 (Newman, J., dissenting).

[4] Id.

By: Jason Engel and Devon Beane

Category:Litigation