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IPO Daily News™

Tuesday, 13 March 2018 8:16 am

Federal Circuit Summaries Logo

* * TERMINAL DISCLAIMER ALONE INSUFFICIENT BASIS FOR CLAIM PRECLUSION

SimpleAir, Inc. v. Google LLC, 16-2738 — On Monday in an opinion by Judge LOURIE, the Federal Circuit vacated a district court’s dismissal of SimpleAir’s complaint as barred by claim preclusion. This was the fourth complaint filed by SimpleAir against Google involving this patent family, which was directed to push notification technology. Three judgments of noninfringement had been entered for Google. SimpleAir argued that a common specification and a terminal disclaimer alone did not allow the district court to presume that distinct patents covered essentially the same invention.

The Federal Circuit found that claim preclusion did not bar SimpleAir’s suit. “A district court cannot presume that a terminally disclaimed continuation patent presents the same cause of action as a parent patent based on the filing of the terminal disclaimer alone.” The Court explained that “the claim preclusion analysis requires comparing the patents’ claims along with other relevant transactional facts.”
(1 to 4 stars rate impact of opinion on patent & trademark law)

USPTO REVEALS NEW PATENT GRANT COVER

On 11 March, at the South by Southwest Interactive Festival in Austin, Texas, the USPTO revealed a new design for the patent grant cover. Over the last one hundred years, the cover has only been redesigned twice. Patent number 10 million, expected to issue later this year, will be the first patent to use the new cover.

USPTO ANNOUNCES TRADEMARK SPECIMEN PROTESTS PILOT PROGRAM

Last week the USPTO announced an email pilot program for trademark specimen protests. Under the program, specimens that are potentially not in actual use that are created for the purpose of submission as a specimen to the USPTO may be challenged by sending an email to the USPTO no later than the 30th day after publication for opposition. The protest must include either objective evidence of third party use of the identical image without the mark in question—or the prior registration numbers and/or serial numbers of applications in which identical images bearing different marks have been submitted to the USPTO.

IP IN THE MASS MEDIA

Nando’s Sues Independent Chicken Restaurant for Trademark Infringement

Yesterday BBC News reported that chicken restaurant chain Nando’s sued Fernando’s for trademark infringement, claiming that the independent Portuguese-style chicken restaurant’s name and chicken icon are likely to confuse consumers.