Katharine Wolanyk‘s Irish Terriers, Kyla, almost 5 months, and Connor, 9.
This week in Other Barks & Bites: Representative Darrell Issa (R-CA) will once again chair the House IP Subcommittee during the 119th Congress; the Ninth Circuit holds that advertising shares and selling equity cannot constitute trademark infringement; a Federal Circuit panel majority reverses the Patent Trial and Appeal Board (PTAB) while Circuit Judge Stoll dissents over improper fact finding; the Third Circuit holds that asserted features of a hockey memorabilia product are uncopyrightable in a case filed against Fanatics; China announces that smartphones and other electronic devices will be added to that nation’s consumer trade-in program; and Beyonce’s IP holding company finally registers the trademark to daughter Blue Ivy Carter’s name.
Bites
CAFC Reverses PTAB Nonobviousness Ruling Over Stoll Dissent on Improper Fact Finding – On Thursday, January 2, the U.S. Court of Appeals for the Federal Circuit issued a precedential decision in Honeywell International Inc. v. 3G Licensing, S.A. in which the appellate court reversed a Patent Trial and Appeal Board (PTAB) final written decision finding that Honeywell did not show obviousness of the challenged patent claims covering methods of encoding mobile communications. Dissenting from the majority opinion was Circuit Judge Kara Farnandez Stoll, who argued that although the PTAB improperly conflated anticipation with obviousness, the proper decision was vacatur and remand instead of “tak[ing] the extraordinary step of fact finding, a role not appropriate for the appellate stage” by reevaluating expert testimony and making its own obviousness determination.
CAFC Affirms Obviousness of Purdue Pharma’s Abuse-Resistant Oxycodone Claims – On Tuesday, December 31, the U.S. Court of Appeals for the Federal Circuit issued a ruling in Purdue Pharma L.P. v. Accord Healthcare, Inc. affirming the District of Delaware’s final judgment finding Purdue Pharma’s patent claims to crush-resistant and low-toxicity Oxycontin. The Federal Circuit dismissed Purdue Pharma’s arguments that the district court applied erroneous legal standards to the crush-resistant patents, and that the asserted prior art references were directed to general abuse resistance and not improved scalability of hardened pills. The appellate court also nixed Purdue Pharma’s arguments on secondary considerations as either unconnected to the invalidated patent claims or already properly considered by the district court. As to the low-toxicity oxycodone formulation claims, the Federal Circuit rejected Purdue Pharma’s argument that it discovered the claimed impurity created during synthesis of oxycodone, and that routine experimentation would have led a person of ordinary skill in the art to confirm the existence of the impurity as claimed.
Issa to Lead House IP Subcommittee During 119th Congress – On Monday, December 30, House Judiciary Committee Chairman Jim Jordan (R-OH) announced leadership assignments for the subcommittees of the House Judiciary Committee, including Representative Darrell Issa (R-CA) to serve as Chairman of the Subcommittee on Courts, Intellectual Property, Artificial Intelligence, and the Internet.
Ninth Circuit Affirms $56 Million Trademark Verdict Against Molson’s Keystone Campaign – On Monday, December 30, the U.S. Court of Appeals for the Ninth Circuit issued a ruling in Stone Brewing Co., LLC v. Molson Coors Beverage Co. USA in which the appellate court affirmed rulings by the Southern District of California during and following a trademark infringement trial leading to a $56 million jury verdict for Stone Brewing over Molson Coors’ “Own the Stone” ad campaign for its Keystone beer brand. The Ninth Circuit found that Stone Brewing properly brought its claims during the Lanham Act’s four-year statute of limitations, that the record supported a reasonable likelihood of consumer confusion, that the admission of survey evidence and expert testimony challenged by Molson did not warrant a new trial, and that remittitur was not appropriate as Stone Brewing established that Molson’s ad campaign affected sales of all of Stone’s brands.
Third Circuit OKs Dismissal of Copyright Claims Against Fanatics Hockey Memorabilia – On Friday, December 27, the U.S. Court of Appeals for the Third Circuit issued an opinion in Grondin v. Fanatics, Inc. in which the appellate court affirmed the Eastern District of Pennsylvania’s dismissal of copyright claims filed by the creator of “Slice of the Ice” transparent sculpture memorabilia containing rink water from famous hockey games against similar products sold by Fanatics. The Third Circuit found that the asserted features of the copyrighted “Slice of the Ice” sculpture, including a visible air bubble and use of a puck-shaped object, were not copyrightable as either utilitarian or under scènes à faire doctrine.
Ninth Circuit Rules That Sales of Equity Cannot Constitute Trademark Infringement – On Friday, December 27, the Ninth Circuit issued a ruling in LegalForce RAPC Worldwide, P.C. v. LegalForce Inc. affirming the Northern District of California’s dismissal of trademark infringement claims filed by California-based legal services website operator LegalForce RAPC Worldwide against Japan-based legal services software developer LegalForce Inc., agreeing that the district court lacked jurisdiction over claims against the Japan entity’s website and that claims against that company’s U.S. expansion plans were unripe. U.S. Circuit Judge Daniel Collins authored a concurrence, agreeing with the majority that LegalForce Inc.’s advertisement and sale of equity could not constitute trademark infringement but disagreeing with the panel majority’s definition of “good” as limited to goods that are “tangible” or “movable.”
Barks
CAFC Will Close to Observe National Day of Mourning for President Carter – On Thursday, January 9, the U.S. Court of Appeals for the Federal Circuit will be closed in observance of the National Day of Mourning for Former President James “Jimmy” Earl Carter, Jr., which will be considered a legal holiday. Counsel in affected cases will be notified by the Clerk’s Office.
Chatty Courses LSAT Prep Website Faces Infringement Claims From LSAC – On Tuesday, December 31, Newton, PA-based Law School Admission Council (LSAC), which administers the Law School Admission Test (LSAT), filed a lawsuit in the Eastern District of Pennsylvania including infringement and breach of contract claims against the operator of Chatty Courses, which provides LSAT prep courses online, for improperly using a LawHub Advantage account to copy LSAT materials and displaying test prep materials online with LSAT trademarks.
California District Court Enjoins Imperial Brands from Using Bullseye Mark – On Tuesday, December 31, the U.S. District Court for the District of California granted 2ONE and PPM, makers of synthetic nicotine products, a preliminary injunction, finding ITG Brands, LLC/ Imperial Tobacco Limited’s use of its ZONE bullseye mark was likely to cause consumer confusion. According to 2ONE, ITG had never used their registered ZONE mark in commerce. The district court rejected ITG’s claims to priority in the ZONE mark and enjoined ITG from “engaging in any future sale of product bearing the Bullseye Mark,” although it did not require that ITG recall any product currently in the market. The court also reduced the amount of the bond requested by ITG from $50 million to $1 million.
Beyonce Finally Obtains Trademark Rights to Blue Ivy Carter’s Name – On Tuesday, December 31, the U.S. Patent and Trademark Office published for opposition a trademark registration for the standard character mark “BLUE IVY CARTER” owned by BGK Trademark Holdings, an IP holding company for American music icon Beyonce Knowles. BGK Trademark first applied for this mark in January 2016, facing challenges from several small business owners before the USPTO recently registered the mark as first reported by The U.S. Sun.
Judge Farbiarz Gives Defendant Final Chance to Appear in E&J Gallo Prosecco Trade Dress Case – On Tuesday, December 31, U.S. District Judge Michael Farbiarz of the District of New Jersey issued an order denying default judgment to E&J Gallo Winery in a trade dress case regarding a competing prosecco product, giving defendant Three Sixty Five Wines “a last chance to appear,” in part because evidence in the case showed that the defendant had stopped importing and selling allegedly infringing prosecco products in 2022.
IBM Dismisses Web Advertising and Virtual World Infringement Claims With Prejudice – On Monday, December 30, information technology giant IBM filed a joint stipulation of dismissal in a patent infringement case against video game developer Take-Two Interactive Software, dismissing with prejudice its claims that Take-Two’s video games, including titles in its NBA 2K, Grand Theft Auto and Red Dead Redemption series, infringed upon IBM’s patents claiming web advertising, virtual world and user authentication technology.
Anthropic Stipulates to AI Model Guardrails Preventing Lyric-Infringing Outputs – On Monday, December 30, a joint stipulation and proposed order regarding a preliminary injunction motion was entered in the Northern District of California after several major music publishers, including Concord Music Group and Universal Music Corp., agreed to resolve their request to force artificial intelligence (AI) developer Anthropic to maintain guardrails preventing outputs that infringe the music publishers’ copyrighted song lyrics in exchange for Anthropic’s promise to apply those guardrails to future large language models and product offerings.
This Week on Wall Street
China to Subsidize Smartphone Sales to Increase Consumer Demand of Electronics – On Friday, January 3, Chinese state-owned media announced that the country would be expanding its consumer trade-in program to various electronics, including smartphones and tablets, that will be subsidized by special long-term treasury bonds, in a bid to improve consumer sales of electronics with recent data showing that sales of foreign phone brands dropped 47% this November compared to the same period last year.
Alibaba Selling Sun Art Hypermarket Chain for $1.6B to Chinese Private Equity Firm – On Wednesday, January 1, Chinese e-commerce giant Alibaba announced that it had agreed to sell its majority interests in hypermarket retail chain Sun Art Retail Group to DCP Capital, a Chinese private equity firm, for nearly $1.6 billion USD as the company pivots from brick-and-mortar stores to refocus on core e-commerce operations.
