Category: Patent

by Dennis Cxrouch

In re Lizzo LLC (TTAB 2023)

In a new precedential opinion, the PTAB has sided with the musical artist Lizzo — agreeing to register her mark “100% THAT BITCH” for use on apparel.  The Trademark Examining Attorney had refused registration on “failure-to-function” — concluding that the phrase was a commonplace expression used to express a well-recognized sentiment.

The phrase comes from Lizzo’s 2017 song Truth Hurts (remade in 2019) that has become a viral sleeper hit.  The original line in the song is “I just took a DNA test, turns out I’m 100% that bitch.” But Lizzo herself did not create the phrase. Rather, Lizzo apparently saw a social media meme about being 100% that bitch and then added it to her song.  The examining attorney concluded that “evidence that consumers may associate the phrase with the famous singer/song because it was a lyric in the singer’s song does not entitle the applicant as a singer-songwriter to appropriate for itself exclusive use of the phrase.”

On appeal, the TTAB reversed the refusal.  Unlike patents and copyrights, trademark law is not designed to reward the creative endeavor of invention or authorship. 

Continue reading Trademark Registration: 100% THAT BITCH at Patently-O.

by Dennis Crouch

The Supreme Court will be handling some significant cases over the next few months that may have a major impact for folks working in IP & Tech fields. The following is brief list sorted by the date of oral arguments.

• Feb 21 – Gonzales v. Google (Does the safe harbor of CDA Section 230 shield Google from liability for encouraging users to view offending videos).
• Feb 22 – Twitter v. Taamneh (Can Twitter be held liable for providing a service that aids and abets terrorism, despite its substantial non-violative uses).
• March 21 – Abitron v. Hetronic (Extraterritorial application of US Trademark Law — damages from foreign sales).
• March 22 – Jack Daniels v. VIP (Commercial humor leading to fair use or no-infringement/dilution in the TM context)
• March 27 – Amgen v. Sanofi (Full Scope Enablement: How much description is enough to satisfy the written description requirement).
• April 17 – Slack v. Pirani (For securities liability, what causal link is required between misleading statement and the purchase of shares).

Continue reading Upcoming Supreme Court Oral Arguments in IP & Tech Cases at Patently-O.

by Dennis Crouch

The Supreme Court will be handling some significant cases over the next few months that may have a major impact for folks working in IP & Tech fields. The following is brief list sorted by the date of oral arguments.

• Feb 21 – Gonzales v. Google (Does the safe harbor of CDA Section 230 shield Google from liability for encouraging users to view offending videos).
• Feb 22 – Twitter v. Taamneh (Can Twitter be held liable for providing a service that aids and abets terrorism, despite its substantial non-violative uses).
• March 21 – Abitron v. Hetronic (Extraterritorial application of US Trademark Law — damages from foreign sales).
• March 22 – Jack Daniels v. VIP (Commercial humor leading to fair use or no-infringement/dilution in the TM context)
• March 27 – Amgen v. Sanofi (Full Scope Enablement: How much description is enough to satisfy the written description requirement).
• April 17 – Slack v. Pirani (For securities liability, what causal link is required between misleading statement and the purchase of shares).

Continue reading Upcoming Supreme Court Oral Arguments in IP & Tech Cases at Patently-O.

In re Google LLC (Fed. Cir. 2023)

This is another mandamus action win by Google on convenience grounds. The Federal Circuit has ordered the case moved out of the Western District of Texas (Waco) to the Northern District of California.

Jawbone Innovations, LLC sued Google for patent infringement back in 2021 in W.D.Tex. (Waco).  Jawbone is a Texas company and has a physical base in Waco. But, as the court noted, the company was formed only a few months before the lawsuit was filed.  Some of you may own Jawbone headphone/speaker products.  The operating company closed in 2017, and Jawbone Innovations is a resulting patent-holding company.

As usual, Google moved to transfer its case out of the W.D. Tex.  Judge Albright reviewed and rejected the transfer motion and Google immediately petitioned for mandamus.  The Federal Circuit has now granted mandamus and ordered the case transferred.

Although the appellate court stated that it provided deference to Judge Albright’s decision, it ultimately rejected his analysis.  I note a couple of the issues below:

1. Time to Trial: The appellate panel indicated that the likelihood of a speedy resolution in one jurisdiction versus another should not be given any regard in the convenience analysis unless the parties particularly justify why a speedy trial is important.

Continue reading Transfer Venue: Texas Corp Status Given No Weight at Patently-O.

In re Google LLC (Fed. Cir. 2023)

This is another mandamus action win by Google on convenience grounds. The Federal Circuit has ordered the case moved out of the Western District of Texas (Waco) to the Northern District of California.

Jawbone Innovations, LLC sued Google for patent infringement back in 2021 in W.D.Tex. (Waco).  Jawbone is a Texas company and has a physical base in Waco. But, as the court noted, the company was formed only a few months before the lawsuit was filed.  Some of you may own Jawbone headphone/speaker products.  The operating company closed in 2017, and Jawbone Innovations is a resulting patent-holding company.

As usual, Google moved to transfer its case out of the W.D. Tex.  Judge Albright reviewed and rejected the transfer motion and Google immediately petitioned for mandamus.  The Federal Circuit has now granted mandamus and ordered the case transferred.

Although the appellate court stated that it provided deference to Judge Albright’s decision, it ultimately rejected his analysis.  I note a couple of the issues below:

1. Time to Trial: The appellate panel indicated that the likelihood of a speedy resolution in one jurisdiction versus another should not be given any regard in the convenience analysis unless the parties particularly justify why a speedy trial is important.

Continue reading Transfer Venue: Texas Corp Status Given No Weight at Patently-O.

by Dennis Crouch

The pending case of Jump Rope Systems v. Coulter Ventures is fascinating to me as someone who teaches both property and civil procedure. The basic questions: (1) As an inter partes review (IPR) proceeding draws to a close – toward cancellation – at what point are the claims no longer enforceable? (2) What is the effect of cancellation, in particular, is it like canceling a magazine subscription where the former subscriber isn’t off the hook for past-due bills; or, is it like an annulment – an Ab Initio Extinguishment?  The case also (3) raises a straight-up due process challenge to the IPR system.

A typical IPR where the petitioner prevails includes the following three-step sequence:

1. Unpatentable Decision: PTAB issues a final written decision concluding that the challenged claim has been proven unpatentable with a preponderance of the evidence.
2. Affirmed on Appeal: On appeal, the Federal Circuit affirms that judgment.
3. Certificate of Cancellation: Once the appeal is complete, the USPTO Director then issues a certificate canceling the claim. 35 U.S.C.

Continue reading Cancelling a Patent Claim at Patently-O.

by Dennis Crouch

The pending case of Jump Rope Systems v. Coulter Ventures is fascinating to me as someone who teaches both property and civil procedure. The basic questions: (1) As an inter partes review (IPR) proceeding draws to a close – toward cancellation – at what point are the claims no longer enforceable? (2) What is the effect of cancellation, in particular, is it like canceling a magazine subscription where the former subscriber isn’t off the hook for past-due bills; or, is it like an annulment – an Ab Initio Extinguishment?  The case also (3) raises a straight-up due process challenge to the IPR system.

A typical IPR where the petitioner prevails includes the following three-step sequence:

1. Unpatentable Decision: PTAB issues a final written decision concluding that the challenged claim has been proven unpatentable with a preponderance of the evidence.
2. Affirmed on Appeal: On appeal, the Federal Circuit affirms that judgment.
3. Certificate of Cancellation: Once the appeal is complete, the USPTO Director then issues a certificate canceling the claim. 35 U.S.C.

Continue reading Cancelling a Patent Claim at Patently-O.

By Jason Rantanen

It’s time for the January 2023 Federal Circuit statistics update! As I’ve done for the last few years, below I provide some statistics on what the Federal Circuit has been doing over the past year. These charts draw on the Federal Circuit Dataset Project, an open-access dataset that I maintain that contains information on all Federal Circuit decisions and docketed appeals.  While previous versions of the dataset have been limited to merits decisions, this year we began including non-merits terminations as well.  Currently, all non-merits terminations from 2022 are included in the dataset.  We’ll be working backwards to add terminations from earlier years.

One of my goals with this dataset is to make it publicly accessible so that anyone can use it in their own research. A complete copy of this year’s release is archived at https://dataverse.harvard.edu/dataverse/CAFC_Dataset_Project.  In addition, you can access the dataset through a user interface via https://empirical.law.uiowa.edu and generate your own subsets and graphs. A copy of the codebook is available at these locations as well. In addition, if you are a researcher who would like help using the dataset, please reach out to me – I’m happy to help out.

Continue reading Federal Circuit Dataset & Stats: January 2023 Update at Patently-O.

By Jason Rantanen

It’s time for the January 2023 Federal Circuit statistics update! As I’ve done for the last few years, below I provide some statistics on what the Federal Circuit has been doing over the past year. These charts draw on the Federal Circuit Dataset Project, an open-access dataset that I maintain that contains information on all Federal Circuit decisions and docketed appeals.  While previous versions of the dataset have been limited to merits decisions, this year we began including non-merits terminations as well.  Currently, all non-merits terminations from 2022 are included in the dataset.  We’ll be working backwards to add terminations from earlier years.

One of my goals with this dataset is to make it publicly accessible so that anyone can use it in their own research. A complete copy of this year’s release is archived at https://dataverse.harvard.edu/dataverse/CAFC_Dataset_Project.  In addition, you can access the dataset through a user interface via https://empirical.law.uiowa.edu and generate your own subsets and graphs. A copy of the codebook is available at these locations as well. In addition, if you are a researcher who would like help using the dataset, please reach out to me – I’m happy to help out.

Continue reading Federal Circuit Dataset & Stats: January 2023 Update at Patently-O.

by Dennis Crouch

1. Vidal v. Elster.  Elster is seeking to register the mark TRUMP TOO SMALL, but was initially rebuffed because the law prohibits registration of a mark consisting of the name of a particular individual. 15 U.S.C. 1052(c).  On appeal though, the Federal Circuit found such a restriction unconstitutional — especially in this situation where the mark forms a criticism.  The court’s decision follows the logic of two recent Supreme Court cases on point: Tam (the SLANTS – disparaging marks) and Brunetti (FUCT – scandalous marks).  In its petition, however, the US Gov’t tries to distinguish those viewpoint cases from this one that arguably does not involve viewpoint discrimination. Question presented: “Whether the refusal to register a mark under Section 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.”
2. Nike v. Adidas: This one is not yet a petition, but in an extension request, Nike indicated its plans to petition this case.  The basic issue is whether the IPR statute permits the Board to raise patentability issues sua sponte with regard to substitute claims. 

Continue reading Three New Supreme Court Cases: at Patently-O.