Category Archives: IP

Treatise Update – Faber on Mechanics of Patent Claim Drafting

Faber on Mechanics of Patent Claim Drafting (Seventh Edition) spotlights proven claim drafting practices and techniques that have been firmly established by patent authorities and custom. This lucid, time-saving handbook offers readers start-to-finish directions for every type of claim, numerous tips on how to avoid common mistakes, definitions and preferred usage of stylized words and phrases in patent law, and more.

The latest release updates and expands this treatise with practical information and commentary on a variety of topics, including:

  • Software Inventions: New discussion of the Federal Circuit’s decisions in Tenstreet LLC v. DriverReach LLC, Uniloc USA, Inc. v. LG Electronics USA, Inc., Customedia Technologies, LLC v. Dish Network Corp., Ubisoft Entertainment, S.A. v. Oy, and Dropbox v. Synchronoss. See § 1:4.2[A].
  • Laws of Nature: New analysis of Illumina, Inc. v. Ariosa Diagnostics, Inc., a method of preparation case in which the Federal Circuit found a procedure that exploits natural phenomenon to be patent-eligible. See §§ 1:4.4 and 1:4.6.
  • Methods of Treatment: New commentary on CardioNet v. Infobionic in which the Federal Circuit has shown that diagnosis techniques involving improved devices or laboratory techniques may be patent-eligible. See § 1:4.6[A].
  • Preamble: New discussion of Shoes by Firebug LLC v. Stride Rite Children’s Group, LLC in which the Federal Circuit concluded that the “textile” preamble was not limiting because the body of the claim was a structurally complete invention without the preamble but that, in another patent, the preamble was limiting because the body of the claim recited footwear and cited the preamble for an antecedent basis for footwear. Also discussed is Bio-Rad Labs, Inc. v. 10X Genomics Inc. in which the Federal Circuit held that the preamble may not be divided into separate portions but must be read together as a whole. See § 2:4.
  • “Consisting essentially of”: New analysis of PPG Industries v. Guardian Industries Corp. in which the Federal Circuit said that, despite its indefiniteness, “consisting essentially of” has a definite meaning when used in the description of a composition that includes listed ingredients that follow the phrase. See § 2:6.
  • Order of Elements: A new section discusses challenging an obviousness rejection premised on the Burhans rule when the prior art does not teach of limitation of the claimed process. See § 3:21.
  • Use of “Means for” or “Step for”: New discussion of Fiber LLC v. Ciena Corp. and whether the definiteness requirement of section 112(f) is satisfied when a means-plus-function structure is incorporated by reference. See § 3:29.2.

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Treatise Update – Likelihood of Confusion in Trademark Law

Likelihood of Confusion in Trademark Law illuminates the pivotal multiple-factor test, giving readers a strong grasp of the key elements used by the courts to determine if likelihood of confusion exists. Packed with hundreds of real-world examples and updated with every relevant U.S. Court of Appeals decision, this treatise is a must-have reference for trademark specialists and other intellectual property attorneys, and important reading for corporate counsel, generalists, and corporate executives.

This update includes a new addition to the color illustrations in the appendix and new case law integrated into the text throughout. Among the topics addressed in this latest release:

  • Purposes of trademark law: As summarized by the Supreme Court summarized in United States Patent & Trademark Office v. Trademark protection “secures to the owner of the mark the goodwill of her business and protects the ability of consumers to distinguish among competing producers . . . . Federal trademark protection, supplementing state law, supports the free flow of commerce and fosters competition.” See § 1:2, at note 43.1.
  • First Amendment concerns—artistic expression cases: According to the Ninth Circuit, the likelihood of confusion test for infringement “ordinarily” strikes “a comfortable balance between the Lanham Act and the First Amendment. That said, where artistic expression is at issue, we have expressed concern that the traditional test fails to account for the full weight of the public’s interest in free expression” (Gordon v. Drape Creative, Inc.). See § 1:8.2, at note 183.1.
  • Confusion and fair use: The Second Circuit, in Tiffany & Co. v. Costco Wholesale Corp., notes that “a defendant may raise a fair use defense even where the challenged material is likely to cause some confusion.” See § 1:10, at note 244.1.
  • The multi-factor test in registrability proceedings: The TTAB follows the multi-factor du Pont test of the Federal Circuit, requiring consideration of thirteen factors which must be considered when relevant evidence is of record. See § 2:8, at note 158.1.
  • Geographic terms: The TTAB says that “geographically descriptive terms are usually accorded less weight” in a confusion analysis, but it distinguishes certification marks. See § 3:4.1, at note 93.1.
  • Disclaimers: A party’s disclaimer of one portion of its mark may result in the remaining portion being treated as dominant and a source of confusion. See § 4:9.4, at note 272.
  • Collateral goods: Mark owners in every field commonly apply their brands to collateral items such as mugs and caps distributed as promotional giveaways. Collateral goods may provide significant revenue streams in cases of well-known brands. See § 5:7, at note 75.
  • Actual confusion: Lack of evidence of actual confusion was not probative, according to the TTAB, where the Board found no “specific geographical areas of overlap between the [parties’] consumer markets” to create opportunities for actual confusion to occur (In re Guild Mortgage Co.). See § 7:7, at note 131.
  • Bad faith: The Second Circuit observes in Tiffany & Co. v. Costco Wholesale Corp. that “[p]rior knowledge of a senior user’s trademark does not necessarily give rise to an inference of bad faith and may [actually] be consistent with good faith.” See § 8:4.2, at note 125.

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New Edition! Kane on Trademark Law

PLI Press is proud to publish the new Seventh Edition of Kane on Trademark Law: A Practitioner’s Guide, a classic for more than three decades. This edition brings forth the insight and expertise of Kathleen E. McCarthy, the new author of the treatise, who is a partner in the New York office of King & Spalding, LLP, President of the New York Intellectual Property Law Association (NYIPLA), and former Editor-in-Chief of the Trademark Reporter.

McCarthy notes that, as courts try to balance the different and often conflicting interests of brand owners, competitors, consumers, reviewers, and critics, and the tensions between trademark and First Amendment protections, trademark decisions can seem inconsistent. In her analysis of the law, and her practical counsel to attorneys, she emphasizes the importance of examining all the facts, being creative in making arguments and analogies, and understanding that there are almost always exceptions to the rules and also facts that help explain the rationale for the exceptions, even if not explicitly discussed in the court opinion.

Extensively revised and updated, the Seventh Edition provides both new practical guidance and critical information on a range of topics including:

  • Trademark searches in the context of modern marketing practices and social media
  • The most effective use of surveys in court
  • Mandatory electronic filing of trademark applications
  • The best approaches to securing international registrations
  • Excusable nonuse of a mark by businesses required to be closed during a pandemic
  • The latest Trademark Office fees
  • Recent dilution cases
  • Alternatives to federal court litigation for handling false advertising claims
  • Tips for navigating practice before the Trademark Trial and Appeal Board

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Treatise Update – Copyright Law: A Practitioner’s Guide

Copyright Law: A Practitioner’s Guide(Second Edition) provides up-to-date analysis of court decisions and practical advice for the protection of copyrights. Written by two nationally recognized lawyers who have litigated major copyright cases, including those involving digital forms of communication, this authoritative treatise also includes a useful detailed flowchart using an actual case result to illustrate how damages and profits are calculated.

In the latest update—release #4 (September 2020) , the authors expand the book with discussion of the following topics, among others:

  • Unprotectable subject matter—government edicts: Government edicts, such as state statutes, ordinances, regulations, and judicial opinions, have long been deemed to be not subject to copyright. See new § 2:7.1[B].
  • Visual Artists Rights Act—remedies: VARA subjects violators of the attribution and integrity rights to the usual civil remedies for copyright infringement under section 501. See § 4:2.2[A], at note 325.1.
  • Visual Artists Rights Act—“work of recognized stature”: In Castillo v. G&M Realty, L.P., the Second Circuit held that the work in question must be “of high quality, status, or caliber that has been acknowledged as such by a relevant community.” See § 4:2.2[E], at note 341.
  • Deposit requirement—websites and website content: The Copyright Office has issued a circular offering guidance on the deposit process for websites and website content. See § 5:2.5, at note 28.
  • Registration: Resolving a circuit split, the Supreme Court has determined that registration occurs when the Copyright Office issues the certificate of registration and not when a copyright owner submits the application, materials, and registration fee to the Copyright Office. See § 5:3.1, at note 44.
  • Fair use—transformativeness factor: According to the Fourth Circuit, that the respective “subjective intents” of the creator of the work and of its user differ may not be of particular relevance in the transformativeness inquiry, insofar as those differences do not necessarily result in the creation of “new aesthetics or a new work.” See § 8:4.2[A], at note 86.1.
  • States’ sovereign immunity: The Copyright Remedy Clarification Act (1990) abrogated state sovereign immunity from actions for copyright infringement. See § 11:7.7, at note 396.

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Treatise Update: Post-Grant Proceedings Before the Patent Trial and Appeal Board

Post-Grant Proceedings Before the Patent Trial and Appeal Board guides readers through the process of initiating a post-grant proceeding, taking discovery, seeking sanctions, proposing and opposing claim amendments, effectively advocating at the oral hearing, appealing to the Federal Circuit, and handling a wide array of issues involving co-pending district court litigation.

Updates from Release #10 include:

  • In Chapter 2, the section on Claim construction discusses changes to the PTAB standard for petitions filed after November 13, 2018, from the broadest reasonable interpretation standard to the Phillips v. AWH Corp. standard used in civil actions and at the International Trade Commission. See § 2:5, at note 57.
  • In Chapter 3, a section on Standing—real party in interest discusses Applications in Internet Time, LLC v. RPX Corp., in which the Federal Circuit held that “the focus of the real-party-in-interest inquiry is on the patentability of the claims challenged in the IPR petition, bearing in mind who will benefit from having those claims canceled or invalidated.” See § 3:2.3[A], at note 46.
  • In Chapter 3, the section called Joinder discusses the first case to be taken up by the PTAB’s Precedential Opinion Panel, which determined that, under appropriate and limited circumstances, a petitioner may join its own previously instituted IPR to request joinder and institution of new issues (Proppant Express Investments, LLC v. Oren Technology, LLC). See § 3:6, at note 193.
  • In Chapter 8, Amendments to claims discusses the notice of proposed rulemaking put forth by the USPTO on October 21, 2019. See § 8:3.1, at note 99.
  • In Chapter 8, under the section Inter partes review—timelines, a new figure 8-1 depicts the anticipated trial flow of an inter partes review proceeding, depending on whether or not a second, revised motion to amend is filed by the patent owner. See § 8:3.1.
  • Chapter 14, Appeals to the Federal Circuit includes updated information on the number of PTO appeals filed in the CAFC. See § 14:1, at note 2.

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2018 Federal Circuit Yearbook: Patent Law Developments in the Federal Circuit

Each year, the Federal Circuit Yearbook provides a concise, comprehensive review of every patent decision published by the U.S. Court of Appeals for the Federal Circuit during the preceding year. With the Yearbook, readers may conveniently follow all recent patent law developments in the Federal Circuit, presented in a manner that reduces specialized patent and technical jargon to a minimum.

Cases summarized in the Yearbook include the following, among many others:

Utility and Inventions Patentable: Where claims “are substantially similar and linked to the same” law of nature, analyzing representative claims is proper. Section 101 issues may be resolved at the pleading stage before formal claim construction: “we have repeatedly affirmed § 101 rejections at the motion to dismiss stage, before claim construction or significant discovery has commenced.” See Cleveland Clinic Foundation, Cleveland Heartlab, Inc. v. True Health Diagnostics LLC, discussed in § 1:1.

Novelty and Statutory Bars: Federal Circuit concludes that inventor declaration without corroborating evidence alone is not always sufficient to overcome section 102(e) prior art. Despite prior case law (particularly in the U.S. Court of Customs and Patent Appeals), Federal Circuit seems to move law under section 102(e), directed to showing prior disclosure subject matter was not “by another,” closer to case law under section 102(g), directed to showing prior inventorship. See EmeraChem Holdings, LLC v. Volkswagen Group of America, Inc., discussed in § 2:4.

Nonobviousness: Circuit Judge Newman, in dissent, urged that it is time to “remedy” the Graham analysis—namely that the objective factors should be considered together with the first three Graham factors rather than first determining whether a prima facie case of obviousness had been shown. See Merck Sharp & Dohme Corp. v. Hospira, Inc., discussed in § 3:7.

Claim Construction: Using functional language in an apparatus claim does not necessarily mean that the claim improperly covers both an apparatus and method. Functional language described capabilities of a system rather than user actions. See MasterMine Software, Inc. v. Microsoft Corp., discussed in § 6:5.

The 2018 Federal Circuit Yearbook is available on PLI PLUS, our online research database. If you’d like to purchase a print copy, please email or call 877.900.5291.