Overview
Letter from the Editor
Dear Friends and Colleagues,
This issue of The Newtonian is themed: look back and look ahead. You’ll find that each practice group has a pair of insight cases: one that discusses a notable development from 2022 and one that identifies a development that is likely to be important in 2023.
Litigation Practice Group Insights
2022: Protecting Confidential Information in Court Proceedings
2023: Patent Enablement Goes to SCOTUS
Trademark Practice Group Insights
2022: Trademark Office Change in Deadline for Office Action Responses
2023: Does BAD SPANIELS Make for Bad Law?
Patent Practice Group Insights
2022: Section 101 Has Become Even More Unsettled
2023: The Unitary Patent and the Unified Patent Court Arrives in Europe in 2023
Copyright Practice Group Insights
2022: Developments in the Copyright Claims Board
2023: Two Princes: SCOTUS to Put Its Spin on Copyright Fair Use
The image on the cover is original artwork created by DALL-E-2, “a new AI system that can create realistic images and art from a description in natural language.” AI is a hot topic now, especially for intellectual property law. It’s an issue we will almost certainly face and one about which you can expect us to share insights. In the meantime, we simply hope to inspire you. The language prompt for this image was simply: “Reflection of the past and view of the horizon in the style of David Hockney.”
As always, we hope you find value in The Newtonian. Please feel free to share it with others and to share your thoughts with us at inquiries@leasonellis.com.
Warmly,
Henry Gabathuler
Partner
Editor, The Newtonian
Section 101 Has Become Even More Unsettled
The courts have issued several decisions about patent eligibility under §101 of the Patent Act, invalidating certain patent claims. Critics are concerned that these decisions have made it harder for pending applications to be approved and will make more patents subject to §101 challenges in the future. Recent §101 decisions include American Axle & Manufacturing v. Neapco Holdings LLC , Interactive Wearables, LLC v. Polar Electro Oy , and David A. Tropp v. Travel Sentry, Inc. 1. American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, Neapco Drivelines LLC , 967 F.3d 1285 (Fed. Cir. 2020) (cert. denied) The American…
The Unitary Patent and the Unified Patent Court Arrive in Europe
Europe is launching a new patent system with two major changes: a single patent right (Unitary Patent) and a unified court system (Unified Patent Court [UPC]) to handle disputes. Unitary Patent The current European Patent Office system requires applicants to choose which European countries to validate a granted application in. This can lead to high costs from translation, validation, and recurring renewal fees for each selected country. The Unitary Patent aims to simplify this process by providing a single patent right for 17 participating European countries. Non-participating countries like Croatia, Poland, Spain, and the UK can still be covered using…
Trademark Office Change in Deadline for Office Action Responses
Congress passed the Trademark Modernization Act of 2020 in December 2020 with the goal of simplifying trademark registration and enforcement in the United States. In November 2021, the USPTO implemented a Final Rule that reduced the deadline for responding to Office Actions from six months to three months, effective December 3, 2022, for applications filed under Sections 1 or 44 of the Trademark Act only. The new deadline does not apply to pre-registration Office Actions for applications filed under the Madrid Protocol. For applicants having trouble meeting the accelerated deadline, a one-time, three-month extension is available for $125. Failing to…
Does BAD SPANIELS Make For Bad Law? SCOTUS
In the 2020 Ninth Circuit trademark infringement case VIP Products, Inc. v. Jack Daniel’s Properties, Inc. , 953 F.3d 1170 (9th Cir. 2020) (the “BAD SPANIELS” case), the court held that a dog toy shaped like a bottle of Jack Daniel’s whiskey and bearing labels parodying Jack Daniel’s trade dress was an “expressive work.” This expanded the definition of “expressive work” to include everyday items that contain a non-zero level of expression rather than just literary or artistic works. As a result, the court found that the dog toy qualified for special First Amendment protections and instructed the lower court…
Developments in the Copyright Claims Board
The Copyright Claims Board (CCB), a forum for copyright claimants to seek damages up to $30,000, opened its doors last June. The CCB hears three types of copyright cases: (1) copyright infringement, (2) declarations of non-infringement, and (3) claims of misrepresentation regarding notices submitted under the Digital Millennium Copyright Act. As of December, 281 claims had been filed. Most claims relate to the alleged infringement of pictorial, graphic, and sculptural works, but there are also claims for literary works, sound recordings, motion pictures, and audiovisual works. The CCB aims to provide an affordable and accessible option for individuals and small…
Two Princes: SCOTUS to Put Its Spin on Copyright Fair Use
The U.S. Supreme Court was expected to decide a case concerning the boundaries of the fair use doctrine under the U.S. Copyright Act, Andy Warhol Foundation for Visual Arts, Inc. v. Goldsmith , 11 F.4th 26 (2d Cir. 2021). The case involves photographer Lynn Goldsmith’s 1981 copyrighted photographic portrait of the music icon Prince and Andy Warhol’s silkscreen paintings based on the portrait, which were created without Goldsmith’s permission. The issue in the case is whether Warhol’s paintings are unauthorized infringements of Goldsmith’s copyright or if they are non-infringing fair uses. Specifically, the Supreme Court was asked to consider the…
Protecting Confidential Information in Court Proceedings
Intellectual property lawsuits often involve confidential technical, business, or financial information. To prevent this information from becoming public during court proceedings, such as written briefs or hearings, the parties must request a court order to seal the records and/or the courtroom. U.S. district courts have become more strict about what confidential information can be filed “under seal” and what must be made public. A recent case, Uniloc USA, Inc. v. Apple Inc. , 25 F.4th 1018 (Fed. Cir. 2022), highlights the importance of being thorough when trying to keep confidential information private. In Uniloc , Uniloc sought to file 109…
Patent Enablement Goes to SCOTUS
Enablement under §112 of the Patent Act is one of several requirements for obtaining a patent, and generally requires that a patent specification adequately describe how to make and use the claimed invention. The U.S. Supreme Court was set to hear Amgen, Inc. v. Sanofi in 2023 to address the issue of whether a patent can cover a class of related compounds (genus) when the specification only describes some of the members of the genus (species). The lower courts found Amgen’s patents on the monoclonal antibody Repatha® to be invalid due to lack of enablement for essentially claiming patent protection…
