Overview
Letter from the Editor
Dear Friends and Colleagues,
In April, Leason Ellis celebrated its 15th anniversary. The firm launched during the 2008 financial crisis. That forced us to be nimble and quick and would eventually better prepare us for the COVID pandemic and an ever-changing world. Today, we are globally recognized as an IP leader.
This issue leads off with a feature article: “Fifteen Years of Strategizing and Protecting Clients’ Intellectual Property Assets.” It’s a fun read that provides insight into the firm’s four senior partners: why they do what they do, how the firm has evolved, and their thoughts on the future.
Fittingly, the Insight case discussions in this issue include references and topics that span a vast range of time. They look way back (Morse’s telegraph patent), way ahead (the potential of AI in IP law), and at our current popular culture (Andy Warhol, Taco Tuesdays, Ed Shereen, and more). Our goal is to entertain and enlighten you with thinking that you can apply to your business now. To further help you, we are introducing bylines so that you can easily learn about and follow up with the authors.
Patent
Leason Ellis’ Next Lateral Employee: The Intellectual Property AI-ssociate?
By Joshua J. Montgomery
Goldilocks and The Unveiling Standards: Amgen Decision Sets ‘Just Right’ Rules for Antibody Patent Enablement
By Susie S. Cheng, Ph.D., and Jarryd R. Werts
Copyright
Controversy in Pop Life: The Supreme Court’s Latest Copyright Fair Use Decision
By Emily A. Rice
“Thinking Out Loud” About Copyright in Music
By Sara E. Gruber
Trademark
Taco Bell Battles to ‘Liberate’ the Trademarked Term “Taco Tuesday”
By Vera Glonina, Leason Ellis Trademark Intern
Down Boy! Supreme Court Vacates 9th Circuit Decision and Remands “Bad Spaniels” Case Back to the District Court
By Tommas F. Balducci
Litigation
Turning Defense Into Offense: A Leason Ellis Case
By Tatsuya Adachi
Federal Circuit Clarifies the Scope of Prior-Art Subject to America Invents Act’s Estoppel Provisions
By Henry A. Gabathuler
As always, we hope you find value in The Newtonian. Please feel free to share it with others and to send your thoughts to us at inquiries@leasonellis.com.
Warmly,
Henry A. Gabathuler
Partner
Editor, The Newtonian
Leason Ellis’ Next Lateral Employee: The Intellectual Property AI-ssociate?
We have previously written about whether artificial intelligence (AI) systems can qualify as inventors on a U.S. patent, with the courts concluding that such systems do not qualify as inventors under U.S. patent law absent future legislative action. Inventors and content creators, however, are not the only parties to IP procurement, nor are they the only entities at risk of disruption. AI systems—like ChatGPT in particular—may soon be a component of the savvy patent draftsperson’s toolkit, rendering those behind the technology adoption curve at risk of obsolescence. Case studies are more readily available than you might think. Consider the following…
Goldilocks and The Unveiling Standards: Amgen Decision Sets ‘Just Right’ Rules for Antibody Patent Enablement
The U.S. Supreme Court’s unanimous decision in Amgen v. Sanofi upheld the Federal Circuit’s ruling that two of Amgen’s patents were not enabled. 143 S. Ct. 1243 (May 18, 2023). Under 35 U.S.C. § 112(a), a patent specification must enable a person skilled in the relevant field to make and use the invention. The Court highlighted that Amgen’s claims aimed to encompass potentially millions of additional antibodies beyond the 26 specifically described in the patent. The Court, however, found that the description of “conservative substitution” to amino acid sequences of the additional antibodies was not enough to enable them but…
Controversy in Pop Life: The Supreme Court’s Latest Copyright Fair Use Decision
Without realizing it, the late artists Andy Warhol and Prince foreshadowed the issue in AWF v. Goldsmith, et al. , which involved a dispute over the Copyright Act’s fair use defence. The principal issue in the case was whether Andy Warhol’s use of Lynn Goldsmith’s photograph of Prince in creating “Orange Prince” was of a sufficiently different “purpose or character” from Goldsmith’s under the first factor of the U.S. Copyright Act’s fair use defence (i.e., “the purpose and character of the use, including whether such use is of a commercial nature”—17 U.S.C.A. § 107). The U.S. Supreme Court recently ruled…
“Thinking Out Loud” About Copyright in Music
The landscape of copyright law in the music industry has evolved again due to a recent jury verdict that British pop star Ed Sheeran did not infringe the copyright on Marvin Gaye’s 1973 song, “Let’s Get It On.” The lawsuit, filed by the heirs of Ed Townsend, a co-writer of the 1973 song, alleged that Sheeran’s 2014 song “Thinking Out Loud” was substantially similar to the melodic, harmonic, and rhythmic composition of “Let’s Get It On.” Griffin et al v. Sheeran et al , 17 CIV. 05221 (S.D.N.Y.). During the jury trial, presided over by Judge Stanton of the U.S.…
Taco Bell Battles to ‘Liberate’ the Trademarked Term “Taco Tuesday”
“Taco Tuesday” has become something of a beloved tradition for many people around the world. But what if one restaurant could own trademark rights to the phrase? Taco Bell thinks that’s “not cool.” On May 16, 2023, Taco Bell filed a petition at the Trademark Trial and Appeal Board (TTAB) to cancel the federal trademark registration of “Taco Tuesday” for restaurant services owned by Taco John since 1995. Taco Bell claims that “we’re the cool company that wants everyone to enjoy Taco Tuesday” and emphasizes that “it seeks no damages; it simply seeks reason and common sense.” Also, Taco Bell,…
Down Boy! Supreme Court Vacates 9th Circuit Decision and Remands “Bad Spaniels” Case Back to the District Court
On June 8, 2023, the Supreme Court handed down its unanimous decision in Jack Daniel’s v. VIP Products . As Justice Kagan described, the “case is about dog toys and whiskey, two items seldom appearing in the same sentence.” The most significant holding from the case is that the Rogers (or Artistic Relevance) test will not apply when a defendant uses the complained-of mark in a source-identifying capacity, regardless of whether such usage may also have some expressive function. The case revolves around the questions of (1) whether a humorous chew toy resembling a Jack Daniel’s Whiskey bottle (the “Bad…
Turning Defense Into Offense: A Leason Ellis Case
Leason Ellis LLP scored a recent victory on behalf of client AeroClean Technologies, Inc. (n.k.a. Molekule Group, Inc.) in its defence of trademark infringement claims brought by Sterilumen, Inc. in the U.S. District Court for the Southern District of New York. Case No. 7:22-cv-06842. Sterilumen’s lawsuit sought $20 million in damages based on a claim that AeroClean’s use of the trademarks AEROCLEAN and STERIDUCT in connection with air purification technology solutions infringed upon Sterilumen’s alleged rights in its trademarks, including AIROCLEAN and STERILUMEN. AeroClean responded by filing counterclaims seeking to invalidate Sterilumen’s trademark registrations. AeroClean asserted that Sterilumen’s trademarks are…
Federal Circuit Clarifies the Scope of Prior-Art Subject to America Invents Act’s Estoppel ProvisionsSubtitle
Popular avenues for challenging the validity of a patent can include litigation in a district court, inter partes review (IPR) proceedings at the U.S. Patent and Trademark Office, and sometimes a combination of the foregoing. One strategic consideration when seeking to challenge a patent’s validity is the America Invents Act’s (“AIA”) estoppel provision, which prevents the petitioner in an IPR (i.e., the party challenging a patent claim’s validity) from later asserting in court that the patent is invalid on grounds it raised or “reasonably could have raised” in the IPR. 35 U.S.C. § 315(e)(2). The Court of Appeals for the…
