Ninth Circuit: Reversible error to only consider one of the likelihood of confusion factors In a trademark case yesterday, the Ninth Circuit held that the similarity-of-the-marks factor could not be considered exclusive of the other likelihood of confusion factors in determining trademark infringement. In doing so, the court reversed the grant of summary judgment against the defendant's counterclaims of trademark infringement, as well as the defendant's counterclaims for copyright […] Continue Reading →
Federal Circuit affirms preemption of D.C.’s Prescription Drug Excessive Pricing Act of 2005 In a recent decision, the Federal Circuit affirmed the District Court for the District of Columbia's judgment that the federal patent laws preempted the District of Columbia's Prescription Drug Excessive Pricing Act of 2005. More details of Biotechnology Indus. Org. v. District of Columbia after the jump. The challenged legislation at issue is the Excessive […] Continue Reading →
Federal Circuit: Analogous art test survives KSR, but obviousness affirmed In a case decided yesterday, the Federal Circuit affirmed a decision by the BPAI finally rejecting all but one claim of a patent under reexamination as obvious. The patentee admitted that all elements of the claims save one were present in two relevant prior art references and that another reference disclosed the final element, but […] Continue Reading →
Second Circuit: Merger doctrine bars copyright in commodities settlement prices The Second Circuit issued a decision yesterday applying the merger doctrine of copyright to settlement prices on a mercantile exchange. The court affirmed summary judgment holding that the settlement prices were not copyrightable, because the expression of the prices (a single number) merged with the idea that was expressed (the fair market value for each […] Continue Reading →
Revised TTAB rules published, some take effect August 31, others November 1 As noted last week, the revised TTAB rules were published in today's Federal Register. The final rules are somewhat different than those proposed last January. Some of the new rules include: Opposers/Petitioners will serve copies of the notice of opposition or cancellation petition on the opposing party directly, rather than having the TTAB send out […] Continue Reading →
KSR in litigation: Summary judgment of obviousness granted post-KSR after denial pre-KSR The Wall Street Journal today is reporting about a patent infringement case in the Northern District of California that is believed to be the first instance where a district court has changed its opinion regarding the validity of a patent as a result of KSR. The court found two principles from KSR to "guide" the […] Continue Reading →
USPTO proposes new BPAI rules to cope with upcoming increase in appeals In a Federal Register notice yesterday, the USPTO promulgated revised rules for practice before the Board of Patent Appeals and Interferences. The USPTO will accept comments on the proposed rules until September 28, 2007 via email, fax, or postal mail. Many of the proposed rules appear designed to advance the USPTO's current trend toward finding […] Continue Reading →
Federal Circuit provides more detail on FDA research exemption to infringement The Federal Circuit recently decided a case on remand from the Supreme Court's decision regarding the research exception to patent infringement (35 U.S.C. § 271(e)(1), "The FDA exception"). The Federal Circuit reversed the district court's finding of infringement, holding that the experiments were not infringements because they were reasonably related to research that would be […] Continue Reading →
Sixth Circuit: Proper copyright infringement test applied, finding of no infringement affirmed In a decision Friday, the Sixth Circuit affirmed a district court's finding of no copyright infringement, holding that the lower court had applied the proper legal standard. Specifically, while the district court characterized the test for substantial similarity in a different manner, the application of the test was proper insofar as the court removed from […] Continue Reading →
Revised TTAB rules coming soon The TTABlog reports that the revised TTAB rules initially proposed in a notice of proposed rulemaking on January 17, 2006 are likely to be published in the Federal Register in the next week. The summary of the rules as initially proposed is as follows: The United States Patent and Trademark Office (Office) proposes to amend […] Continue Reading →