Pending En Banc Petitions at the Federal Circuit

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by Dennis Crouch

The Federal Circuit recently decided the en banc design patent case of LKQ v. GM, but the court has not issued an en banc decision in a utility patent case since 2018.  There are currently four interesting petitions pending before the court.

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Design Patent Examination Updates

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Ten years ago - 2014 - the Supreme Court decided Alice Corp v. CLS Bank, holding that - yes indeed - the expansive language of Mayo v. Prometheus (2012) applies equally to software and technology patents.   A few weeks later, the USPTO began a dramatic transformation - pulling back notices of allowance and issuing thousands of supplemental office actions. The Federal Circuit's May 2024 en banc decision in LKQ v. GM is perhaps as dramatic a change for the design patent arena as Alice was for utility patents.  The old Rosen-Durling test made it almost impossible to reject a design patent as obvious except for extreme cases involving either direct copying or extremely broad claims.  The key difficulty was that precedent required the obviousness inquiry to begin with a single prior art reference that is "basically the same" as the claimed design - a roughly 1-to-1 relationship.  Further, any secondary references had to be ‘so related’ to the primary reference that features in one would suggest application of those features to the other." In LKQ, the court found those requirements "improperly rigid” under principles of KSR which require a flexible obviousness inquiry.  The overall effect is to make it easier to find a design patent obvious.

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Veterans’ Benefits at the Supreme Court: The Battle Over Benefit-of-the-Doubt

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by Dennis Crouch

In April 2024, the Supreme Court granted certiorari in the consolidated cases of Bufkin v. McDonough and Thornton v. McDonough, two veterans’ benefits cases on appeal from the Court of Appeals for the Federal Circuit. The cases involve the "benefit-of-the-doubt" rule, a longstanding principle that is codified in veterans law that requires the VA to resolve close or unclear issues in a veteran's favor when adjudicating benefits claims. [SCT Docket]

Both Bufkin and Thornton are veterans who were denied disability benefits by the VA.

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Mishandled Disclosures: A Greek Tragedy in IP Law

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by Dennis Crouch

Neuropublic S.A., a Greek technology company, has filed a federal lawsuit against the law firm Ladas & Parry LLP, with several claims stemming from the firm's alleged mishandling of Neuropublic's confidential invention disclosure -- sending it out to a third party ("PatentManiac") for a preliminary novelty search which then (again allegedly) further leaked the disclosure. Although the case does not involve submission to AI algorithms, some of the questions here are similar to those many  IP attorneys are considering when onboarding new AI tools.

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Goodbye Rosen references, hello Jennings references?

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Guest Post by Sarah Burstein, Professor of Law at Suffolk University Law School

LKQ Corp. v. GM Global Tech., 21-2348 (Fed. Cir. 2024) (en banc).

In its decision in LKQ v. GM, the en banc Federal Circuit may have raised as many questions as it answered. For now, I’d like to focus on one:  What counts as a proper primary reference under LKQ?

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Commenting on the USPTO’s Proposed Rule on Terminal Disclaimers

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[I have substantially updated this post - correcting a couple of issues from the original and also added info from the letter from former USPTO leaders. - DC 6/1/24]

by Dennis Crouch

As I have previously discussed on Patently-O, the USPTO recently issued a notice of proposed rulemaking that could significantly impact patent practice, particularly in the realm of terminal disclaimers filed to overcome non-statutory double patenting rejections. Dennis Crouch, Major Proposed Changes to Terminal Disclaimer Practice (and You are Not Going to Like it), Patently-O (May 9, 2024).  Under the proposed rule, a terminal disclaimer will only be accepted by the USPTO if it includes an agreement that the patent will be unenforceable if tied (directly or indirectly) to another patent that has any claim invalidated or canceled based on prior art (anticipation or obviousness under 35 U.S.C. 102 or 103). This proposal has generated significant debate among patent practitioners, with many expressing concerns about its potential impact on innovation and patent rights.  It is a dramatic change in practice because the typical rule required by statute is that the validity of each patent claim must be separately adjudged. See 35 U.S.C. § 282(a).

The comment period is open until early July, but a number of comments have already been submitted. And I looked through them in order to get some early feedback.  You can read the comments here

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The NYIPLA Brief: Advocating for Patent Term Adjustments

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by Dennis Crouch

The Federal Circuit's 2023 decision in In re Cellect, LLC, 81 F.4th 1216 (Fed. Cir. 2023) has set the stage for a potentially significant Supreme Court case on the interplay between the Patent Term Adjustment (PTA) statute, 35 U.S.C. § 154(b), and the judicially-created doctrine of obviousness-type double patenting (ODP). Cellect is now seeking certiorari, and the New York Intellectual Property Law Association (NYIPLA) has stepped in with an amicus brief supporting the petition, arguing that the case presents "questions of exceptional importance." Brief for New York Intellectual Property Law Association as Amicus Curiae Supporting Petitioner at 23, Cellect, LLC v. Vidal, No. 23-1231 (U.S. May 28, 2024).

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Implied Contracts with the Government over Counterfeit Coins

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by Dennis Crouch

Although not expressly an IP case, the Federal Circuit's new decision in The Portland Mint v. United States does focus on counterfeiting coins as well as implied contracts with the Federal Government.

The key facts are as follows:

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Celebrity Names and Trademark Claims: Insights from the Hobbs Winery Case

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by Dennis Crouch

The Federal Circuit's recent decision involving Paul Hobbs and Hobbs Winery raises a number of important issues for anyone investing in celebrities or influencers.  In the case, early investors in Hobbs Winery were unable to prevent Mr. Hobbs from using his name in other wine ventures, even though a registered mark on PAUL HOBBS was owned by Hobbs Winery. This case was decided on statutory grounds - with a holding that minority owners in a company are not authorized to bring a TM cancellation to protect a mark held by the company.  This is an important decision because it prevents the TTAB from being used to settle internal corporate management issues.

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WIPO Adopts Treaty on Intellectual Property, Genetic Resources, and Associated Traditional Knowledge

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by Dennis Crouch

For many years, there have been concerns about "biopiracy" - the misappropriation of genetic resources (GR) and traditional knowledge (TK) from indigenous peoples and local communities, often in developing countries. Biopiracy involves researchers or companies obtaining GR or TK, using it to develop commercial products like medicines, and obtaining patents without adequately compensating or getting permission from the original TK/GR holders.

Some well-known examples of alleged biopiracy include: patents on wound-healing properties of turmeric, which had long been known in India; patents related to neem tree extracts, also used for centuries in India; Japanese and American patents on extracts of the African "Hoodia" cactus, traditional used by San people to stave off hunger; and a US patent on the Amazonian "ayahuasca" vine, considered sacred and used in ceremonies by indigenous peoples. You can see a Sean Connery look-alike doing this in my image below.

World Intellectual Property Organization (WIPO) member states have adopted a groundbreaking new treaty addressing patent rights in the context of these genetic resources and traditional knowledge associated with genetic resources. The WIPO Treaty on Intellectual Property, Genetic Resources, and Associated Traditional Knowledge, finalized on May 24, 2024,

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USPTO Adapts to CAFC’s New Guidelines: What Design Patent Examiners Need to Know

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by Dennis Crouch

On May 22, 2024, the day after the Federal Circuit's en banc LKQ v. GM decision, the USPTO issued a memorandum to its examiners providing updated guidance and examination instructions in light of the court's overturning of the long-standing Rosen-Durling test for determining obviousness of design patents. The memo, signed by USPTO Director Kathi Vidal, aims to immediately align USPTO practices with the more flexible approach outlined by the Federal Circuit, which eliminated the rigid requirements that: (1) a primary reference be "basically the same" as the claimed design, and (2) secondary references be "so related" to the primary reference that features in one would suggest application to the other.  This is a major shift in examination practice for design patents so it will be important to watch the developments to see whether the office ramps up design examination.

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Speck v. Bates: Federal Circuit’s Two-Way Test for Pre-Critical Date Claims Limits Belated Interferences and Derivation Proceedings

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by Dennis Crouch

Speck v. Bates, No. 23-1147 (Fed. Cir. May 23, 2024)

In likely one of the last interference proceeding appeals, the Federal Circuit has applied a "two-way test" to determine whether pre-critical date claims and post-critical date claims are "materially different" under pre-AIA 35 U.S.C. § 135(b)(1). The court found that Bates' post-critical date claims in its U.S. Patent Application No. 14/013,591 were time-barred because they were materially different from Bates' pre-critical date claims.

Although the decision is based upon an interference proceeding, the same provision is found within the new version of 135(b) that covers

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Decoding Patent Ownership beginning with Core Principles

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by Dennis Crouch

In a recent decision, the Federal Circuit vacated a district court's grant of summary judgment that an inventor, Dr. Mark Core, had automatically assigned a patent associated with his PhD thesis to his then-employer and education funder TRW.  Core Optical Techs., LLC v. Nokia Corp., Nos. 23-1001 (Fed. Cir. May 21, 2024). The key issue was whether Dr. Core developed the patented invention "entirely on [his] own time" under his employment agreement. The majority opinion written by Judge Taranto and joined by Judge Dyk held the contract language was ambiguous on this point and remanded for further factual development to determine the parties' intent.  Judge Mayer dissented.

Although not discussed in the court's decision, the appellant brief includes a suggestion that the Federal Circuit should "narrow or overrule" the automatic assignment law seen in FilmTec Corp. v. Allied Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991), and its progeny

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