Federal Circuit Affirms Patent Rejection for Lack of Enablement in In re Pen

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by Dennis Crouch

The Federal Circuit (CAFC) recently affirmed a USPTO enablement rejection -- holding that the patentee did not enable the "full scope" of the claimed invention.  In re Pen, 23-2282 (Fed. Cir. 2024) (non-precedential).  As an aside, the listed inventor's legal name is "The Pen;" first and last name respectively, with no middle initial.  Based upon Pen's address, he is related to "The People's Email Network."  In the case, Pen represented himself pro se.

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Trump Too Small: Supreme Court Upholds Lanham Act’s Restriction on Registering Marks With Living Individual’s Names Without Consent

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by Dennis Crouch

In an important trademark law and free speech decision, the Supreme Court held in Vidal v. Elster, 602 U.S. ___ (2024), that the Lanham Act's "names clause" barring registration of a mark that "[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent", 15 U.S.C. § 1052(c), does not violate the First Amendment. Writing for the Court, Justice Thomas distinguished this case from the Court's prior decisions in Matal v. Tam, 582 U.S. 218 (2017) (disparaging marks) and Iancu v. Brunetti, 588 U.S. 388 (2019) (scandalous marks), which struck down other Lanham Act restrictions as unconstitutional viewpoint discrimination. Although content-based, the Court concluded that the names clause is viewpoint-neutral and consistent with the longstanding history and tradition of trademark law.

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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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