Naughty no more, VIP Products “Bad Spaniels Silly Squeaker” lives to see another squeak

VIP Products v. Jack Daniels, No. 18-16012, 9th Circuit, March 31, 2020. A 9th circuit panel denied Jack Daniel’s their win and affirmed in part, vacated in part and reversed in part the district court’s judgement after a bench trial and permanent injunction in favor of Jack Daniel’s Properties, Inc., (“JDPI”) in a trademark suit […]

Chalk holder that looks like a pencil a four time loser at the Federal Circuit

Lanard Toys v Dolgencorp, Appeal No. 2019-1781, Fed. Cir. May 14, 2020 Lanard Toys makes and sells the “Lanard Chalk Pencil”, a chalk holder that looks like a pencil.  Lanard obtained Design patent D671,167 directed to the ornamental features of the chalk holder, and also owns copyright Reg. Va 1-794-458.  Lanard began selling their Chalk […]

UPDATE – Federal Circuit denies HZNP’s request for en banc review

In HZNP Medicines LLC et al. v Actavis Laboratories UT, Inc., 940 F.3d 680 (Fed. Cir. 2019), a Federal Circuit panel affirmed the district court’s holding that the transitional phrase “consisting essentially of” rendered the claims at issue indefinite.  See, my previous post here – https://www.ksjlaw.net/federal-circuit-holds-that-transitional-phrase-consisting-essentially-of-renders-claim-indefinite-unless-the-basic-and-novel-properties-of-the-invention-are-definite/  On February 25, 2020, the Federal Circuit denied HZNP’s […]

“Method of preparation” claims survive §101 challenge at the Federal Circuit

Illumina v Ariosa Diagnostics C.A. No. 2019-1419 (Fed. Cir. 2020) In Illumina, the Federal Circuit reversed the District Court of Northern District of California, and held two patents directed to methods of preparing samples for use in diagnostic methods are patent eligible under 35 USC §101.  In doing so, the Court differentiated its decision in […]

A unanimous SCOTUS sends some luck Lucky’s way in Lucky Brand v Marcel

After 20 years of litigation, on May 14, 2020, the Supreme Court reversed and remanded the 2nd Circuit’s decision in Marcel Fashions Grp, Inc. v. Lucky Brand Dungarees et al., No. 2017-0361. Below, Lucky Brand filed a motion to dismiss using an argument from a previous round of litigation that had not yet been raised […]

“No risk trial” is an offer for sale, and triggers the on-sale bar

And relying on the exemplary data provided with the offer as proof of reduction to practice, without disclosing the offer, is not a good idea.  GS Cleantech v Adkins Energy, No. 2016-2231 (Fed. Cir. March 2, 2020). The US District Court for the Southern District of Indiana (“District Court”) found four of Appellants patents (US […]

Federal Circuit issues two decisions providing claim construction guidance

See, Kaken Pharma v Iancu, __ F.3d __, (Fed. Cir. Mar. 13, 2020) (Newman, O’Malley, TARANTO) and Personalized Media v Apple, [2018-1936] (Fed. Cir. March 13, 2020) (Reyna, Taranto, STOLL). In Kaken, the Federal Circuit used unequivocal statements in the specification and prosecution history, upon which the Examiner relied in allowing the claims, to reverse […]

SCOTUS holds that annotations are not copyrightable

So, those that are charged with following the law actually get to have access to it.  Georgia v Public Resource

Examiner reversed, reminded that claims “must be read in accordance with the precepts of English grammar”

With a Federal Circuit citation, no less. In Ex parte Moffat, USSN 15/227,827, the claims on appeal were directed to toner compositions with white colorants.  Independent claim 1 recited, in pertinent part:  An emulsion aggregation toner having toner particles comprising … one single white colorant consisting of titanium dioxide… While claim 21, dependent from claim […]

Motivation to combine is not present when benefit alleged to be provided by the combination is already present in the art

Wait … what? This argument came up and prevailed – twice – in Tech Center 1700 PTAB decisions in November. First, Ex parte Gama, US Patent Application No 12/042641, Appeal 2019-002094, decided November 5, 2019.  In Gama, the Examiner found claims directed to a fuel filter obvious over two references.  The motivation to combine, the […]