(Informal 1-2 line summaries, which certainly should not be relied upon for legal or other research purposes)
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- CAFC precedentially affirms this trademark matter, where the stylized "I AM MORE THAN AN ATHELETE" mark with a GP GAME PLAN image beneath it, was canceled by counterclaim after its Owner filed an opposition to the marks "I AM MORE THAN AN ATHELETE" and "MORE THAN AN ATHLETE", these marks having prior common law rights transferred by assignment during the opposition. The opposition itself was set aside for lack of evidence ("the Board dismissed Game Plan’s opposition because Game Plan had submitted no evidence at trial"). Addressing the Section 2(d) counterclaim, the Board focused "entirely on the issue of priority because Game Plan conceded likelihood of confusion." Priority is interesting here because the preceding rights were assigned during the opposition ("The Board
cited persuasive authority for the proposition that motives
for assignment during litigation are not dispositive . . . The Board explained
that although UNIP may not have acquired enforceable
rights in services for which it had no continuing use, the
assignment of common law rights in connection with clothing was valid and sufficient to sustain its counterclaim"). Here, CAFC first denies that the assignment runs afoul of the trademark antitrafficking rule under 15 U.S.C.
§ 1060(a)(1) ("[T]he 2019 Assignment is not an assignment in gross and satisfies the requirement to transfer goodwill under § 1060(a)(1) . . . First, the 2019 Assignment expressly defined the purchased assets as trademarks, among other intellectual property, “together with the goodwill of the business associated therewith” . . . also . . . UNIP’s
use of the mark was substantially similar to Ms. Alex’s use,
and UNIP and MTAA shared a common purpose and audience."). CAFC likewise sets aside argument that the assignment runs afoul of 1060 ("UNIP did not assign its pending intent-to-use applications. Rather, it received an assignment of preexisting
common law rights to an already-used mark . . . Section 1060(a)(1) does not prohibit the assignment of such
rights."). Ergo, after briefly addressing various other arguments and administrative matters, CAFC affirms.
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- CAFC denies this writ of mandamus to reconsider the Board's denial for IPR institution based on the "settled expectations" of the patents' age. Salient, in view of the recently proposed change in IPR rules and institution, however, is dicta regarding challenges:
Congress committed institution decisions to the Director’s discretion . . . and protected exercise of that discretion from
judicial review by making such determinations “final and nonappealable,” 35 U.S.C. § 314(d), mandamus is ordinarily unavailable for review of institution decisions . . . That general prohibition bars review
of decisions denying institution of IPR proceedings for efficiency reasons based on parallel district court litigation involving the same patents . . . Cambridge’s constitutional challenges . . . fail to identify the kind of property rights or retroactivity concerns that might
give rise to a colorable Due Process Clause claim . . . Cambridge’s expectation that the PTO would evaluate its petition based on only certain criteria, moreover, is insufficient
to establish a constitutional due process violation . . . We reiterate that we do not decide whether the PTO’s
actions are correct or whether the use of this factor is permitted under the statutes. Nor do we address the availability of mandamus relief for other challenges to institution decisions based on non-constitutional grounds. We decide
only that Cambridge has failed to show a clear and indisputable right to the relief requested given the limits on our
review of the PTO’s decision to deny institution.
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- In this precedential decision, CAFC affirms the no trade secrets JMOL and no inventorship correction decisions below. Regarding the JMOL, the DCT found:
(1) TS 7, TS 11,
TS 20, and TS 24 are not sufficiently definite; (2) TS 11,
TS 20, TS 23, and TS 24 are not “secret;” (3) TS 7, TS 11,
TS 20, and TS 23 had never been used or disclosed by Goodyear; and (4) TS 11 and TS 20 were never conveyed by Coda
to Goodyear.
CAFC applies the Ohio trade secret statute to arrive at the same conclusions ("We conclude that the district court correctly determined that (1) Coda publicly disclosed the information covered by TS 24, and (2) to the extent that TS 24 covered
knowledge not disclosed in Coda’s publications, Coda failed
to identify TS 24 with sufficient particularity."). For example, "Coda’s knowledge regarding the optimal location
for placement of a pump in a tire" appeared publicly in a PCT application and was visible on the tire itself. Trying to overcome this conclusion "Coda asserts that the 2007 PCT application and the 2008
Tire Technology article do not disclose a pump that was
“part of a conventional tire sidewall”", but this then runs into the definiteness issue ("We reject
Coda’s attempt to belatedly introduce additional specificity
into the trade secret based on Mr. Hrabal’s trial testimony
and attorney argument."). Other of the alleged trade secrets likewise encounter definiteness issues ("[T]he listed functions are described in vague terms with no detail regarding how those
functions are carried out") as well as use issues ("[T]he only
alleged evidence of use presented by Coda was a January
21, 2009 email that did not contain the test results described in TS 23"). CAFC concludes by agreeing with the denial to correct inventorship, since the associated arguments were predicated upon the trade secrets ("Coda’s challenges to the
district court’s judgments regarding the correction of inventorship and trade secret claims rise and fall together
because Coda’s sole argument supporting reversal of the
district court’s denial of correction of inventorship is that
the district court improperly granted judgment as a matter
of law with respect to Coda’s trade secret claims").
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- CAFC briefly affirms IPR obviousness invalidity for patents relating "to systems for generating code to provide content on a display of a device."
"Meta
relied on prior art combinations that used a Java Virtual
Machine (“JVM”) to satisfy the “player” limitation . . . Express Mobile’s theory is that an ordinarily skilled artisan would not conclude that the JVM provides instructions “because it causes a different component—the
servlet—to generate a webpage, which causes yet another
component—the web server—to provide the webpage to the
browser” . . . The
Board agreed with Meta that “nothing in the challenged
claims requires that the Player itself directly present or
physically draw the user interface for the user; the claim
requires only that the Player provide ‘instructions’ for such
display” . . . These factual findings are supported by substantial evidence."
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- A brief, but precedential, ITC case, wherein CAFC reverses since the Board's classification of the good as a "diary" rather than a "calendar" conflicts with precedent. Basically, CAFC previously held that "[a] diary is retrospective, not prospective . . . The Trade Court thus erred by expansively interpreting “diary” to include “prospective scheduling devices,” and
accordingly misclassified Blue Sky’s planner as a “diary”
under subheading 4820.10.20.10." Ergo, reversed and remanded to reconsider the government's position.
James Skelley is a solo practitioner based in Mountain View, California since 2015, focusing primarily upon technology transactions and intellectual property procurement. James' practice also serves as an "incubator" for new legal service technologies / methodologies and a "living example" of their application. To this end, James regularly partners with larger law firms and with his clients so as to improve the practice of intellectual property law.
- Utility / Design / PCT Patent Prosecution
- Open Source Diligence
- Technology Transactions (typically as a team)
- Litigation / Inter Partes Review Support (typically as a team)
- James tends NOT to handle low-volume trademark work (though referrals are available)
- USPTO - #59458 - 10/16/2006
- California - #257829 - 12/01/2008
- District Columbia - #1014986 - 08/05/2013
- James is available by email, 8x8 hangout, and in-person meetups in the Valley.
- Email is typically the best way to reach James.
- Machine Learning / Robotics
- Cryptograpy / Cryptocurrency / Smart Contracts
- Medical Device
- Computational Biology (primarily modeling and proteomics)
- Signal Processing (primarily wireless and compression)
- Quantum Physics (primarily semiconductor) / Electromagnetics (antennae, waveguides, etc.)
- Manufacturing / 3D Printing
- James tends NOT to handle pure chemistry applications (though referrals are available), however James HAS handled matters involving computational proteomics, cellular modeling, and diagnostic lab protocols
LawMux Bites are (very) short, one-page summaries of various legal concepts, cases, and technologies. As informal summaries, you certainly shouldn't rely upon them as legal advice / for business use, but they can help orient you if you're new to the subject matter.
Similar to LawMux Bites, notes are (very) short writeups calling attention to various issues. As informal summaries, you certainly shouldn't rely upon them as legal advice / for business use, but they can help orient you to the relevant topic.
