IP UPDATE
Exploring the Latest in Intellectual Property Law
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It’s PRUdent to Refrain from Cybersquatting: ACPA Applies to Domain Name Re-Registration

by | Feb 9, 2023 | ,

The US Court of Appeals for the Fourth Circuit joined the Third and Eleventh Circuits in ruling that the re-registration of an infringing domain name with a bad faith intent to profit violates the Anti-Cybersquatting Consumer Protection Act (ACPA). Prudential Ins. Co. of Am. v. Shenzhen Stone Network Info. Ltd., Case No. 21-1823 (4th Cir. Jan. 24, 2023) (Diaz, Thacker, Floyd, JJ.)

The ACPA, 15 U.S.C. § 1125(d), protects trademark owners from cybersquatters that register, traffic in, or use a domain name “identical or confusingly similar to or dilutive of” a distinctive or famous mark with the “bad faith intent to profit.” The ACPA jurisdictional requirement states that a trademark owner may either establish that a court has in personam jurisdiction over the defendant or, if personal jurisdiction cannot be established, bring an in rem action against the domain name.

Prudential Insurance Company of America’s trademark portfolio includes the term PRU and other PRU-formative marks. Shenzhen Stone Network Information (SSN) acquired the domain name PRU.COM from an online domain name marketplace, which leads to a parked page containing advertisements displaying Prudential’s trademarks and the marks of Prudential’s competitors. Prudential attempted to acquire the PRU.COM domain name twice—once through a domain name brokerage service and once after filing a Uniform Domain Name Dispute Resolution Policy (UDRP) administrative action with the World Intellectual Property Organization (WIPO). SSN rejected both offers. SSN claimed that it planned to develop the website into a foreign exchange and economic news platform, but it never substantively altered the parked page. Prudential subsequently dismissed the UDRP action and filed suit in the Eastern District of Virginia alleging cybersquatting and infringement against the CEO of SSN, Zhang (in personam), and PRU.COM (in rem). Zhang moved to dismiss the action or transfer it to the District of Arizona for lack of personal jurisdiction and in rem jurisdiction. The district court held that although it lacked personal jurisdiction over Zhang, in rem jurisdiction was appropriate at the time the complaint was filed. The district court then dismissed Prudential’s trademark infringement claim as moot, granted summary judgment to Prudential on its cybersquatting claim and ordered SSN to transfer the PRU.COM domain name. SSN timely appealed to the Fourth Circuit.

The Fourth Circuit, reviewing the district court ruling de novo, affirmed. As an initial matter, the Court held that the district court had proper in rem jurisdiction over the PRU.COM domain name because Zhang, as a corporate officer of SSN, lacked standing to defend SSN’s property interests and the domain name registry was located in Virginia. Moreover, in rem jurisdiction is assessed at the time the complaint is filed and cannot be destroyed during the pendency of the case if a proper defendant is later revealed.

Regarding the ACPA claim, SSN argued that since the initial domain name registrant registered PRU.COM in good faith, SSN, as a re-registrant, is not subject to the ACPA. The Fourth Circuit joined the Third and Eleventh Circuits in holding that the term “registration” in the ACPA is [...]

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KSR Does Not Extend to Design Patents (Yet)

by | Feb 9, 2023 |

Addressing the standard for obviousness of design patents, the US Court of Appeals for the Federal Circuit, in a per curiam opinion, upheld the Patent Trial & Appeal Board’s finding that a challenged design patent was not obvious over the pre-KSR design patent obviousness test or anticipated. LKQ Corporation v. GM Global Technology Operations, Case No. 21-2348 (Fed. Cir. Jan. 20, 2023) (per curiam) (Lourie, J., concurring) (Stark, J., concurring).

GM owns a design patent for the fender of a vehicle. LKQ Corp. previously held a license to the patent from GM, but negotiations to renew the license failed. Because LKQ continued to manufacture the fender after the expiration of the license, GM sent LKQ notice that it was infringing the patent. In response, LKQ petitioned for an inter partes review against GM, alleging that the patent was obvious and/or anticipated.

The Board found that LKQ had not presented enough evidence to prove that the patent was obvious or anticipated. For purposes of evaluating the obviousness of the design over prior art, the Board defined ordinary observers as “retail consumers who purchase replacement fenders and commercial replacement part buyers.” The Board concluded that, from the perspective of the ordinary observer, there were multiple differences between the patented design and the key reference, a prior art design patent. LKQ appealed.

LKQ argued that the Board erred in finding that there was no anticipation and in applying the obviousness tests of In re Rosen (C.C.P.A. 1982) and Durling v. Spectrum Furniture (Fed. Cir. 1996) because the Supreme Court of the United States overruled those tests in KSR International v. Telflex (2007).

The Federal Circuit upheld the Board’s definition of the ordinary observer. The Court found that retail purchasers of the entire vehicle would not be included in the ordinary observer group because purchasers of the product embodying the design are interested in the part itself, not the vehicle as a whole. The Court went on to uphold the Board’s application of the ordinary observer obviousness test, agreeing that the patented design created different overall impressions from the prior art for purposes of both obviousness and anticipation.

The Federal Circuit then addressed whether KSR overruled the Durling and Rosen tests for obviousness of design patents. The Court found that LKQ properly preserved the argument for appeal by asserting it in its opening brief to the Board. The Court then found that it was unclear whether the Supreme Court overruled Durling and Rosen, and therefore the Court was bound to apply the existing law. In applying the Durling and Rosen tests, the Court found that LKQ had failed to identify “the correct visual impression created by the patented design as a whole” because the prior art patent lacked certain key design features of the patented design. Thus, the Court affirmed the Board’s finding that the patent was not obvious.

Judge Lourie provided an additional opinion and addressed LKQ’s argument that KSR overruled Rosen. Lourie stated that because KSR did not involve design patents, which [...]

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Actual Confusion Is the Best Evidence of Confusion

by | Feb 9, 2023 |

The US Court of Appeals for the Eighth Circuit reversed and vacated a district court’s preliminary injunction grant in a trademark dispute, concluding that potential confusion is insufficient to satisfy the burden of showing a substantial likelihood of confusion. H&R Block, Inc.; HRB Innovations, Inc. v. Block, Inc., Case Nos. 22-2075; -2023 (8th Cir. Jan. 24, 2023) (Gruender, Erickson, JJ.) (Melloy, J., dissenting).

H&R Block was founded in 1955 and specializes in income tax preparation and other tax and financial services. Over the years, H&R Block has invested billions of dollars in advertising campaigns and has developed significant market presence both in person and online. The company has also obtained several federal registrations directed to the use of a green square logo with its products and asserts that in addition to “H&R Block” it is known as just “Block.”

Square, Inc., is the company behind the Square payment card reader and point-of-sale software that allows individual sellers to accept credit card payments. Square was founded in 2009 and grew over time by acquiring or developing other businesses. Cash App is one of Square’s businesses. Cash App started in 2013 as Square Cash and is a purely digital platform that allows users to deposit and store money on the app. In November 2020, Square acquired free tax credit service Credit Karma Tax, which was rebranded as Cash App Taxes and integrated into the Cash App platform for the 2022 tax season. In December 2021, Square was renamed Block, Inc., and the name change was publicized via Twitter.

Fifteen days after the name change was announced, H&R Block filed suit alleging trademark infringement. Shortly thereafter, H&R Block moved for a preliminary injunction. The district court analyzed the marks at issue for likelihood of confusion and granted, in part, H&R Block’s request for a preliminary injunction. Block appealed.

The Eighth Circuit analyzed a list of six non-exclusive and non-exhaustive factors in assessing likelihood of confusion:

  1. The strength of the owner’s mark
  2. The similarity of the owner’s and the alleged infringer’s marks
  3. The degree to which the products compete with each other
  4. The alleged infringer’s intent to pass off its goods as those of the trademark owner
  5. Incidents of actual confusion
  6. The type of product, its cost and its conditions of purchase.

The Eighth Circuit agreed with the district court that H&R Block had demonstrated that its registered and common law marks were commercially strong but found that the record as a whole did not weigh in favor of H&R Block on the similarity factor because there were observable differences between the two logos and the competing products.

The Eighth Circuit indicated that ultimately the best evidence of likelihood of confusion is actual consumer confusion. While the record supported possible confusion by some consumers, the Court found that the district court had erred in finding actual consumer confusion and that H&R Block had not presented sufficient evidence to rise to the level of substantial confusion by an appreciable number of ordinary consumers. [...]

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2023 IP Outlook: What to Watch in Patent, Trademark and Copyright Law

by , , , , , , , , , , , , , and | Feb 7, 2023 | , , , , ,

Coming out of 2022, developments around the globe are shaping the intellectual property (IP) landscape in the new year. We are seeing cases at the intersection of IP law and NFTs, the opening of the Unified Patent Court in Europe, and decisions from the Supreme Court of the United States and the Court of Appeals for the Federal Circuit affecting innovators and brand owners.

McDermott’s 2023 IP Outlook examines the top trends and decisions in IP law from the past year and shares what you and your business should look out for in the year ahead.

The Latest in SEP Licensing

Amol Parikh

The uncertainty surrounding standard essential patent (SEP) licensing persisted in 2022 and shows little sign of clearing in 2023. SEPs must be licensed to technology implementers on fair, reasonable and nondiscriminatory (FRAND) terms. Because there is no formal definition of FRAND terms, however, legal decisions involving FRAND have historically been determined by courts and non-governmental standard-setting organizations (SSOs). Disputes are frequent—especially between patent owners and technology implementers—and are becoming even more so as advanced wireless technologies such as 5G and WiFi 6 proliferate. Read more.

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Improper Inventorship in US Patent Litigations

Mandy H. Kim | Cecilia Choy, Ph.D.

Inventorship issues can have serious implications in patent litigation, leading to invalidation or unenforceability of the patent at issue, as seen in several notable 2022 cases. In the coming year, patent owners should take steps to minimize risks related to improper inventorship challenges. Read more.

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Patent Decisions Affecting Pharma and Biotech Companies

Douglas H. Carsten | Anisa Noorassa

The past year brought many developments in the life sciences patent legal space. Three decisions in particular hold potential ramifications for drug makers and patent holders in 2023. This year, the Supreme Court of the United States is also expected to consider standards patents claiming a genus must meet to withstand a validity challenge under Section 112—a ruling that could have a significant impact on patent holders in the biotech industry. Read more. 

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Trends in the Western District of Texas

Syed K. Fareed | Alexander Piala, Ph.D. | Christian Tatum

Over the past year, two developments infiltrated the Western District of Texas (WDTX) which may decrease the success of venue transfers and keep case volume steady in 2023. These developments could also give plaintiffs more control over where litigation takes place, including more control over having a case tried before Judge Alan Albright in the Waco Division of the WDTX.
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Strings Attached: No Amendment for Trademark Application in Inter Partes Opposition Proceeding

by | Feb 2, 2023 |

The Trademark Trial & Appeal Board (Board) designated as precedential a decision denying a motion to amend and granting partial summary judgment based on a mistaken identification that did not match the goods sold using the trademark. Fender Musical Instruments Corporation v. Win-D-Fender, LLC, Opp. No. 91272326 (TTAB Sept. 22, 2022) (designated precedential Jan. 12, 2023) (Wolfson, Heasley, Cogins, ATJs) (By the Board).

Win-D-Fender applied for a trademark to register the mark EN-D-FENDER for “musical instruments.” Fender opposed this registration on grounds of nonuse, likelihood of confusion and dilution by blurring and filed a motion for summary judgment on the ground of nonuse. Win-D-Fender then filed a motion to amend the identification of goods in its application from “musical instruments” to “musical instrument accessories, namely, an ambient wind foot joint guard for flute family instruments.”

The Board first considered Win-D-Fender’s motion to amend. Under the relevant trademark rules, an application that is subject to an inter partes proceeding may only be amended if the other party consents (Fender did not) and the Board gives approval, or if the Board grants a motion to amend.

Win-D-Fender filed its application via the Trademark Electronic Application System (TEAS). In a TEAS application, only the goods listed in the proper field can be considered for the identification of goods and broadening the scope of the identification is not permitted. In Win-D-Fender’s application, the only goods listed in the “Identification” field were “musical instruments.” Win-D-Fender argued that its application included a miscellaneous statement reading, “For Musical Instrument Accessories namely a wind guard mounted to a flute.” The Board determined, however, that the description was not in the proper field and therefore was not considered in the identified goods. The Board explained that the TEAS Plus instructions warn applicants to not use the TEAS Plus “Identification” field if it does not contain an accurate listing of the goods and services and to instead use the TEAS Standard filing option. The Board noted that although the identification of “musical instruments” may have been a mistake, it is settled that an established identification cannot later be expanded. The Board concluded that Win-D-Fender was limited to amendments that would narrow or clarify the type of “musical instruments.”

Win-D-Fender also argued that musical instrument accessories would fall under the general umbrella of musical instruments. The Board stated that while musical instruments may use accessories, the accessories themselves are not musical instruments and are not encompassed in the “musical instrument” class. The Board, therefore, denied the motion to amend the identification of goods.

The Board next considered Fender’s motion for summary judgment on the ground of nonuse. An application based on use of the mark in commerce is void if the mark was not used in commerce in connection with the goods identified in the application. As the Board had already decided, Win-D-Fender’s mark was limited to musical instruments and did not include accessories. Fender specifically pointed to an interrogatory response in which Win-D-Fender stated that the products sold under the [...]

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“Open Sesame” Without Translation Won’t Open Door to Trademark Registration

by | Feb 2, 2023 |

The Trademark Trial & Appeal Board (Board) addressed, for the first time, whether an applicant is required to submit an English translation for a word that is created by spelling out the pronunciation of Chinese characters using Latin characters. The Board concluded that the mark required an English translation and upheld the examining attorney’s refusal to register the mark because there was no translation submitted. In re Advanced New Technologies Co., Ltd., Application No. 86832288 (TTAB Jan. 12, 2023) (Bergsman, Taylor, Heasley, ATJs).

Advanced New Technologies sought to register the mark ZHIMA for several goods and services classes. Advanced has a co-pending application for a mark using Chinese characters, where Advanced stated that “[t]he non-Latin characters in the mark translate to ‘ZHIMA’ and this means ‘SESAME’ in English.” According to Advanced, “the Chinese characters [] pronounced ZHIMA mean ‘sesame,’ but ‘Zhima’ itself has no meaning.” The application for ZHIMA was assigned to Advanced by Alibaba Group Holding Limited. Ali Baba is the hero of an Arabian Nights story who opens the door to a thieves’ den using the magical phrase “open sesame.” The use of the Chinese word for “sesame” on goods thus creates an impression that these goods and services bring customers access to something previously unattainable.

Under 37 C.F.R. § 2.32(a)(9), a trademark application must contain an English translation when the mark includes non-English wording. To determine whether a mark includes non-English wording and its meaning, the examining attorney may use dictionaries and search engines. If the examining attorney discovers that the mark contains non-English wording, the applicant must submit a translation. Following this statutory framework, the examining attorney in this case relied on the Chinese English Pinyin Dictionary, which translates “zhi ma” as “sesame” in English and required Advanced to submit a translation that “ZHI MA” means “sesame” in English.

Advanced argued that individuals fluent in English and Chinese would not transliterate “ZHI MA” back into its Chinese character counterparts, which actually do translate to “sesame.” In response, the examining attorney provided at least eight dictionary definitions where “zhima” was defined as “sesame.” Advanced then argued that the dictionaries were defining the Chinese characters, not the English transliteration because “ZHIMA” itself has no meaning in English.

The examining attorney modified the required translation statement to state that “ZHIMA is a transliteration of Chinese characters that means ‘sesame’ in English.” However, Advanced still refused to submit a translation, claiming that it was not required because there are no Chinese characters in the ZHIMA mark and the meaning of the Chinese characters cannot attach to a mark without them. The examining attorney provided information from many news articles where “zhima” was translated as “sesame.” For example, in articles referencing a Chinese version of Sesame Street, “Sesame” was translated as “Zhima.” The examining attorney also produced multiple websites discussing “zhima” products, all of which were sesame products.

The Board found that the many examples where “zhima” was translated as “sesame” by third parties demonstrated that ZHIMA was not an original [...]

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Your Gang Did What!? No Matter—No Forfeiture of IP

by | Jan 26, 2023 |

In a unique case blending intellectual property and criminal law, the US Court of Appeals for the Ninth Circuit agreed that a district court properly exercised jurisdiction over a motorcycle club and upheld the lower court’s finding that the club did not have to forfeit its collective membership marks. United States v. Mongol Nation, Case Nos. 19-50176; -50190 (9th Cir. Jan. 6, 2023) (Ikuta, Forrest, Thomas, JJ.)

Mongol Nation is an unincorporated association comprised of Mongols Gang members and, per the district court, is “a violent, drug trafficking organization.” After a jury found Mongol Nation guilty of both substantive and conspiracy violations of the Racketeer Influenced and Corrupt Organizations (RICO) Act, the US government sought forfeiture of Mongol Nation’s rights in its collective membership marks—a category of “intellectual property used to designate membership in an association or other organization”—and specific property displaying those marks. A jury granted both forfeiture requests, but the district court granted forfeiture only of specific tangible property, not the marks themselves. The district court cited the First and Eighth Amendments: The First protected Mongol members’ rights to display their marks, and the Eighth prohibited the disproportionate remedy of forfeiture of marks that have “immense tangible” value to Mongol members. The government then filed another forfeiture application proposing that Mongol Nation forfeit its exclusive rights in the marks, meaning that Mongol Nation could not prevent others from using them, even in commerce, but that they would not transfer to or vest in the United States. The district court again denied this motion on First and Eighth Amendment grounds.

Both parties appealed, presenting two issues to the Ninth Circuit. Mongol Nation challenged the district court’s jurisdiction to hear the case because Mongol Nation is not a “person” under RICO. The government challenged the district court’s denial of forfeiture of the marks.

The Ninth Circuit summarily dealt with the first issue, noting that Mongol Nation did not properly raise this argument at the district court. The Court was not persuaded by Mongol Nation’s three-part argument that RICO defines an entity to be a “person” only if the entity has a legal interest in property, California only allows unincorporated associations to hold property if the association has a “lawful” purpose, and the indictment describes Mongol Nation as existing for an “unlawful purpose.” The Court found that the association misstated the indictment allegations, which said Mongol Nation’s purposes were “not limited to” the enumerated unlawful ones. Thus, because this argument was not properly preserved and because the RICO “person” definition did in fact encompass Mongol Nation, the Court found that the district court properly exercised jurisdiction.

The Ninth Circuit also affirmed the district court on the forfeiture issue, albeit for different reasons. Without reaching the district court’s First or Eighth Amendment logic, the Ninth Circuit stated that “RICO’s plain text” made the government’s forfeiture request “a legal impossibility.” The Court explained that, following a criminal conviction, a statute must enable property forfeiture. RICO does have such a penalty provision that encompasses [...]

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Deleting Goods from Registration Subject to Cancellation During Audit May Result in Adverse Judgment

by | Jan 26, 2023 |

The Trademark Trial & Appeal Board (Board) addressed, for the first time, whether the deletion of goods and services as a result of a post-registration audit during a cancellation proceeding triggers Trademark Rule 2.134 and found that it does. The Board required the respondent to show cause as to why its deletion of certain goods from the challenged registration should not result in an adverse judgment. Ruifei (Shenzhen) Smart Technology Co., Ltd. v. Shenzhen Chengyan Science and Technology Co., Ltd., Cancellation No. 92077931 (TTAB Jan. 12, 2023) (Lykos, Lynch, Larkin, ATJ)

Ruifei (Shenzhen) Smart Technology petitioned to cancel a trademark that was registered to Shenzhen Chengyan Science and Technology Co., Ltd. (Chengyan) based on abandonment and fraud. Ruifei thereafter filed a motion for leave to amend its pleadings and concurrently filed a motion for partial summary judgment. Finding that Chengyan did not contest the motion for leave to amend, the Board granted Ruifei’s motion and accepted the proposed amended petition to cancel. The summary judgment motion, however, was deferred, pending Chengyan’s response to the instant order.

After the cancellation proceeding was initiated, Chengyan filed a Section 8 Declaration of Use in connection with the contested registration and received a post-registration office action audit. In response to the audit, Chengyan deleted some of the goods from the contested registration’s identification.

Ruifei mentioned the amendment to the contested registration in its motion for partial summary judgment. The Board, having been made aware of the deletion of goods, held that the amendment raised new issues requiring Chengyan’s input before it could consider the motion for partial summary judgment.

Without the written consent of a petitioner, a respondent’s deletion of goods or services from a registration subject to a pending cancellation action typically would result in judgment against the respondent under Trademark Rule 2.134. The purpose of this rule is to prevent respondents in cancellation proceedings from avoiding judgment by cancelling certain goods or services to render the cancellation action moot.

Trademark Rule 2.134(b) provides respondents with the opportunity to explain why certain goods or services were cancelled under Section 8 to avoid judgment being entered against them:

After the commencement of a cancellation proceeding, if it comes to the attention of the . . . Board that the respondent has permitted its involved registration to be cancelled under section 8 . . . an order may be issued allowing respondent . . . to show cause why such cancellation . . . should not be deemed to be the equivalent of a cancellation by request of respondent without the consent of the adverse party and should not result in entry of judgment against respondent.

The Board had not previously considered a situation in which goods or services were deleted as a result of a post-registration audit but held that the “same concerns . . . and [] policies underlying Trademark Rule 2.134(b) apply.” Accordingly, the Board granted Chengyan 20 days to file a response showing why its deletion of certain goods should not [...]

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Bursting the Bubble on Prosecution Delays

by | Jan 26, 2023 |

Addressing a case where a patent owner filed hundreds of applications as part of a strategy to maintain extraordinarily lengthy patent coverage, the US Court of Appeals for the Federal Circuit affirmed a district court’s determination that the patent owner had engaged in a calculated and unreasonable scheme to delay patent issuance. Personalized Media Comms., LLC v. Apple Inc., Case No. 21-2275 (Fed. Cir. Jan. 7, 2023) (Reyna, Chen, JJ.) (Stark, J., dissenting).

The Uruguay Round Agreements Act and General Agreement on Tariff and Trade (GATT) amended the US patent term to 20 years from the effective filing date, instead of 17 years from the issue date. GATT took effect on June 8, 1995. In the months leading up to GATT’s enactment, some would-be patentees seeded patent applications with tremendous disclosures to anchor future applications and obtain the longer pre-GATT term. Practitioners referred to this time period as the GATT bubble. Personalized Media Communications (PMC) submitted 328 GATT bubble applications, from which PMC sought somewhere between 6,000 and 20,000 patent claims. The term of these patents would be 17 years from their issue date instead of 20 years from their priority date.

PMC asserted that Apple’s FairPlay digital rights management software infringed a patent covering a decryption method and won a jury verdict of $330 million. After the verdict, the district court held a bench trial and ultimately found that the patent was unenforceable because of prosecution laches, a doctrine that bars the assertion of patents where the patentee caused unreasonable delay in obtaining the patent, to the detriment of the accused infringer. PMC appealed.

The Federal Circuit affirmed. First, it examined whether the district court had properly concluded that PMC unreasonably delayed. Based on a wide swath of record evidence, all three panel members—Judges Reyna, Chen and Stark—agreed that, like the patentee in Hyatt v. Hirschfeld, PMC had engaged in an intentional scheme to delay patent issuance and extend its monopoly. PMC tried to distinguish its case from Hyatt by arguing that it had developed, with the US Patent & Trademark Office, a consolidation procedure to prioritize review of certain applications. The Court concluded that the structure of the agreement still unreasonably drew out resolution of PMC’s applications, however. The Court also approved of the district court’s reasoning based on the number of applications filed and the introduction of new (albeit narrowing) elements to the claims 16 years after the priority date.

Turning to prejudice, the Federal Circuit concluded that the district court did not act improperly in determining that the delay and improper conduct continued to harm Apple up through the filing of suit in 2015. The Court found that the patent had issued based on a pending claim that PMC did not disclose during PMC-Apple license negotiations and which PMC could quickly get granted and assert against Apple.

Judge Stark dissented, stating that he would conclude that the prejudice Apple faced did not happen during the period in which PMC unreasonably delayed issuance. Judge [...]

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PTO Introduces Intellectual Property Identifier Tool

by | Jan 26, 2023 |

On January 18, 2023, the US Patent & Trademark Office announced the launch of its new Intellectual Property (IP) Identifier tool. This tool is designed for those who are less familiar with IP and assists users in determining whether they have IP and identifies what IP protections are available to support their business, invention or brand. The tool also briefly explains patents, trademarks, copyrights and trade secrets.

The IP Identifier tool comprises two modules: The Basic IP Identifier and the Advanced IP Identifier. The Basic IP Identifier module consists of six questions that allow users to quickly identify the type of IP they should protect. The Advanced IP Identifier module explains the specific types of IP and includes links to additional resources, including how to file an application for protection. A third module, Managing Your IP Assets, is currently under development.



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