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IPO Daily News™

Friday, 11 August 2017 12:39 pm

Federal Circuit Summaries Logo

* * * REQUEST FOR ATTORNEY’S FEES UNDER PATENT ACT SECTION 285 DOES NOT INVOKE 7TH AMENDMENT RIGHT TO JURY TRIAL

AIA America, Inc. v. Avid Radiopharmaceuticals, 16-2647 — Yesterday in an opinion by Judge HUGHES, the Federal Circuit upheld a district court award of attorney’s fees to Avid and the University of Pennsylvania under Patent Act section 285. AIA sued on patents directed to research technologies drawing on the discovery of a genetic mutation associated with early-onset Alzheimer’s disease. In a jury trial, the district court found that AIA lacked standing to assert the patents; the judge subsequently awarded attorney’s fees of more than $3.9 million. AIA argued that the Seventh Amendment required a jury trial to decide facts supporting an award of attorney’s fees.

The Federal Circuit found that the district court did not violate AIA’s Seventh Amendment right to a jury trial because under the Tull test, both the nature of the claim and the nature of the remedy reflected that awards under section 285 were equitable rather than legal issues. Although Federal Circuit precedent prevented a court from making findings contrary to or inconsistent with issues resolved by the jury during trial, that precedent did not prohibit “making additional findings not precluded by the jury’s verdict.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

Federal Circuit Summaries Logo

* USPTO PROPERLY REFUSED REGISTRATION OF MERELY DESCRIPTIVE MARK

In re: North Carolina Lottery, 16-2558 — Yesterday in an opinion by Chief Judge PROST, the Federal Circuit upheld the USPTO’s refusal to register N.C. Lottery’s trademark. N.C. Lottery sought to register “FIRST TUESDAY” in connection with lottery services and games. The USPTO refused registration on the basis that, in the context of promotional materials announcing new games on the first Tuesday of each month, the mark was merely descriptive of a feature of the goods and services. N.C. Lottery argued that the USPTO erred by relying on specimens to supplement the meaning of the mark itself as it would be understood by a consumer without the context of the explanatory text.

The USPTO did not err. The Board “must consider a mark in its commercial context to determine the public’s perception.” Substantial evidence supported the finding that no “mental thought or multi-step reasoning” was required to understand the nature of the goods and services.
(1 to 4 stars rate impact of opinion on patent & trademark law)

IP Chat Channel Logo

NEXT WEEK ON IPO’S IP CHAT CHANNEL – JUDGE GILSTRAP’S TEST AND “INTERVENING CHANGE IN LAW?”: LATEST ON VENUE

Tune in to the IP Chat Channel on Tuesday, 15 August, at 2:00p.m. ET for Judge Gilstrap’s Test and “Intervening Change in Law?”: Latest on Venue. Thousands of pending patent cases are now on uncertain ground because of the U.S. Supreme Court’s TC Heartland decision in May that overturned almost three decades of Federal Circuit jurisprudence concerning venue in patent litigation. Our panel of veteran litigators—YAR CHAIKOVSKY (Paul Hastings LLP), MICHAEL FLOREY (Fish & Richardson PC), and JONATHAN SUDER (Friedman, Suder & Cooke)— will examine what’s happened since in district courts and how that disorder is likely to be resolved on two key issues:

• Is TC Heartland an “intervening change in law” that allows defendants to revive a venue challenge? Does it matter how far their cases have progressed? District courts are coming to widely differing decisions on these questions.
• What will be the new rules for proper venue that accord with the Supreme Court’s reiterated understanding of Section 1400(b)? Most notably, what constitutes “a regular and established place of business?” In late June Judge RODNEY GILSTRAP of the Eastern District of Texas, who oversees the largest docket of patent cases in the U.S., laid out a four-factor test in Raytheon v. Cray, which is now being challenged at the Federal Circuit. Our panel will discuss the Federal Circuit’s immediate and longer-term options.

IP Chat Channel webinars are recorded and available on our website after the live webinars. CLE granted in many states.

IP IN THE MASS MEDIA

Patent Suit Filings Down in ED Tex

On Monday Bloomberg BNA reported that patent infringement complaints filed in the Eastern District of Texas in July dropped 43 percent from June 2017 and 83 percent from July 2016.

Times of San Diego Reports on Copyright Suit against Conan O’Brien

On Wednesday the Times of San Diego reported on a copyright infringement suit brought against late-night talk show host CONAN O’BRIEN by ROBERT ALEX KASEBERG. Kaseberg claims that in 2015 O’Brien and his writers copied a joke about New England Patriots’ quarterback TOM BRADY that Kaseberg had posted to Twitter.

StoneTurn2017

STONETURN GROUP TO SPONSOR IPO’S ANNUAL MEETING

The Monday Dinner Reception on 18 September at AT&T Park during the IPO Annual Meeting in San Francisco, CA, will be sponsored by StoneTurn.