· In U.S. Polo Assoc., Inc. v. PRL USA Holdings, Inc., the Second Circuit Court of Appeals found that the natural zone of expansion doctrine did not permit the United States Polo Association (“USPA”) to expand its offerings into a line of fragrances and affirmed the district court’s entry of a permanent injunction prohibiting such use. The USPA filed a declaratory judgment to approve use of its Double Horseman mark, accompanied by the words “U.S. POLO ASSN.,” “USPA,” and/or “1890,” in the sale of men’s fragrances. PRL counterclaimed, seeking entry of a permanent injunction precluding such use—which the district court granted. USPA’s argument was centered on the, so called, natural zone of expansion doctrine. USPA argued that its history of selling branded apparel provided it with the right to expand into related markets, i.e., apparel sales give rise to the right to expand into fragrances. The district court gave little weight to USPA’s survey and found that PRL’s survey gave strong evidence of a likelihood of confusion. The Second Circuit found that the district court’s holdings regarding the survey evidence did not abuse its discretion and that the previous litigation and USPA’s history did not support USPA’s argued natural right to expand.
· In Function Media, L.L.C. v. Google, Inc., the Federal Circuit Court of Appeals held that the denial of a pre-trial motion for summary judgment of non-infringement is not sufficient to show that the district court delegated claim construction to the jury. Function Media (“FM”) sued Google for infringement of three patents directed at “facilitate[ing] advertising on multiple advertising outlets such as newspapers and websites.” Slip op. at p. 2. The district court held that one patent was invalid for being indefinite “because the specification did not disclose sufficient structure for its sole independent claim’s means plus function term ‘means for transmitting.’” Id. at pp. 5–6 (citations omitted). A jury found the asserted claims in other two patents invalid and not infringed. FM moved for judgment as a matter of law (“JMOL”) that the claims were not invalid, which the district court granted with respect to four claims. This did not alter the jury verdict of non-infringement.
FM appealed on a number of grounds, including an assertion that the district court gave the claim interpretation to the jury. The argument was based on the fact that the district court denied Google’s motion for summary judgment of non-infringement. FM argued that the denial of summary judgment demonstrated that there were unresolved issues regarding claim scope, which were subsequently left to the jury rather than construed by the court. The Federal Circuit did not agree that the district court improperly gave the claim interpretation to the jury, the Federal Circuit stated, “We hold that the denial of a pre-trial motion for summary judgment of non-infringement does not, by itself, show that the district court delegated claim construction to the jury. This is especially true where, as here, the jury was instructed to apply the district court's claim constructions.” Id. at pp. 21–22.
· In Cephalon, Inc. v. Watson Pharma., Inc. , the Federal Circuit Court of Appeals reversed a district court’s holding of invalidity for lack of enablement stating, “Watson failed as a matter of law to show with clear and convincing evidence that Cephalon’s patents require undue experimentation to practice the invention.” Slip op. at p. 2. Throughout the discussion of enablement, the Federal Circuit highlighted that the burden is on Watson to show lack of enablement—undue experimentation—and to do so by clear and convincing evidence. The district court’s analysis was that, “the disclosures lacked teachings directed to formulating and co-administering two separate dosage forms . . . to achieve an effervescent reaction. The lack of disclosure of such methods of co-administration would, according to the court, necessitate undue experimentation to practice the invention.” Id. at p. 11 (citations omitted). Watson merely provided “[u] nsubstantiated statements indicating that experimentation would be ‘difficult’ and ‘complicated.’” Id. at pp. 15–16. The Federal Circuit found that these statements did not meet the standard of clear and convincing evidence to establish undue burden as opposed to reasonable experimentation. As such, the Federal Circuit reversed the district court’s holding of invalidity and remanded.
· The United States Patent and Trademark Office published the final rules and guidelines governing First-Inventor-to-File. (http://www.uspto.gov/news/pr/2013/13-10.jsp) There were two separate Federal Register publications and each is briefly discussed below. A more thorough discussion of each is forthcoming.
o Changes to Implement First Inventor to File Provisions of Leahy-Smith America Invents Act
This publication sets forth the changes that will be necessary to implement the First-Inventor-to-File standards. It addresses changes regarding each of the following:
§ The addition of definitions in the AIA to the rules of practice;
§ The submission of affidavits or declarations regarding: disclosures in priority disputes under the first-to-file standards and prior public disclosures;
§ Standards regarding a U.S. Patent or Published Applications having a prior art effect as of the filing date of a foreign priority application;
§ Elimination of the provisions regarding statutory invention registrations; and
§ Adoption of requirements for nonprovisional applications filed on or after March 16, 2013, that claim priority to or the benefit of the filing date of an application filed prior to March 16, 2013.
o Examination Guidelines for Implementing First Inventor to File Provisions of Leahy-Smith America Invents Act
This publication sets forth the changes the changes to the examination guidelines under the First-Inventor-to-File standard. The publication is also meant to clarify and respond to questions provided during the public comment period regarding whether there is a requirement that the mode of disclosure by an inventor or joint inventor be the same as the mode of disclosure of an intervening disclosure.