Media Center

2021 In Review: Trademarks, Copyrights and Patents

January 18, 2022

by Brian Gregg, Lois Duquette, Tom Gulick, Olivia Levine, Christopher Ladner and Yangmo (“Harvey”) Ahn (Law Clerk)


Satan Shoes

Nike Inc. v. MSCHF Product Studio Inc., No. 21-cv-1679, (E.D.N.Y. 2021)

In late March, Nike Inc. filed suit claiming trademark infringement and dilution in connection with MSCHF Product Inc.’s marketing of a “Satan Shoe” bearing Nike’s trademark.  U.S. District Court Judge Eric R. Komitee for the Eastern District of New York granted a restraining order over the Satan Shoes created by MSCHF for rapper Lil Nas X based on infringement of Nike’s trademark.

The order banned MSCHF from selling any additional Satan Shoes, which were modified versions of Nike’s popular Air Mac 97 shoes.  The Satan Shoes featured a bronze pentagram and, reportedly, a drop of human blood.  By the time the restraining order went into effect, MSCHF already had sold all but one of its 666 pairs of Satan Shoes, and the restraining order did not require MSCHF to recall those shoes already sold.

There was already evidence of significant confusion and delusion in the marketplace, including campaigns to boycott Nike in response to the mistaken belief that Nike had sponsored or approved MSCHF’s Satan Shoes.  Nike also claimed dilution, as the Satan Shoe was built on a modified black and red Air Max 97.

Attorneys for MSCHF argued that the artistic expression conveyed in the Satan Shoes was protected by the First Amendment, barring any relief based on claims of trademark infringement or dilution. They argued that the Satan Shoes were not an infringement of Nike’s trademark, but “individually-numbered works of art that were sold to collectors.”  However, these arguments were unsuccessful, and Judge Komitee granted Nike’s request for a temporary restraining order.

While the restraining order did not have a practical impact in stopping the sale of additional Satan Shoes, it led the parties to settle the dispute out of court.  As part of the settlement, MSCHF agreed to initiate a voluntary recall to buy back any Satan Shoes for their original retail prices in order to remove them from circulation. As such, Nike was able to come to a satisfactory resolution without litigation.

Practical Takeaway: Here MSCHF essentially argued that it’s modification and re-branding of the shoes was a protected expression of art.  But what it was really doing is re-selling NIKE branded shoes in bulk, and its attempted transformation of those shoes was minimal.  Also, the nature of the transformation (“Satan Shoes”) was likely offensive to Nike and didn’t encourage Nike to want to work with MSCHF to continue the project under Nike’s authorization.  It is risky business to modify and re-sell third party’s branded products, particularly famous brands like NIKE.  Arguing first amendment expression was a type of “fair use” defense and fair use is exceptionally subjective.  Relying on a fair use defense as the legal foundation for one’s actions is a risky business model indeed.

Thums Down

The Coca-Cola Company v. Meenaxi Enterprise Inc., 2021 TTAB No. 92063353, (Trademark Trial & App. Bd. June 28, 2021)

In June, the Trademark Trial and Appeal Board (TTAB) ruled in favor of Coca-Cola Co. that Meenaxi Enterprise Inc., an unaffiliated company, was trying to dupe American consumers by using the names and logos of popular Coca-Cola sodas sold in India.

The TTAB canceled two trademark registrations held by Meenaxi for the marks THUMS UP and LIMCA.  Both THUMS UP and LIMCA have been used as brand names for sodas by Coca-Cola for decades in India.  In addition to using the marks, Meenaxi also imitated Coca-Cola’s actual trade dress for its Indian products.  Meenaxi used essentially identical logos to deceive consumers in the United States who were familiar with Coca-Cola’s products from India to believe that Meenaxi’s THUMS UP and LIMCA products were the same as those produced by Coca-Cola in India.

The TTAB cited Bayer v. Belmora, a Fourth Circuit decision ruling that Bayer AG had the right to block an American company from using Bayer’s Mexican brand name to confuse Mexican-American consumers.  Similar to Bayer v. Belmora, the TTAB ruled that Meenaxi’s actions were aimed at Indian-American consumers, intending to confuse those consumers.  The TTAB ruled that Meenaxi’s actions were “exactly the type of blatant misuse of marks in a manner calculated to trade on the goodwill and reputation of others that is contemplated under the misrepresentation of source statute.”

Practical Takeaway.  The TTAB’s decision helps ease concerns for owners of foreign trademarks because it supports their right to block third parties from registering the same mark if they can show that consumers would believe that the third party’s U.S. product is the foreign products that consumers have come to know.

Meenaxi has appealed the TTAB’s ruling to the Federal Circuit.  The Federal Circuit must now decide whether to be consistent with Bayer v. Belmora from the Fourth Circuit, or to create a potential divide among the circuit courts.  This appeal will be a case to watch for 2022.

A Bona Fide MEMOJI

Soc. Techs. Ltd. Liab. Co. v. Apple Inc., No. 20-15241, 2021 U.S. App. LEXIS 20659 (9th Cir. July 13, 2021)

This case regarding rights in the MEMOJI trademark offers valuable lessons regarding the nature of use required to support bona fide use in commerce to obtain a trademark registration.  A July decision from the Ninth Circuit affirmed a lower court summary judgment ruling finding that a defective product was rushed to market for the purpose of supporting a trademark infringement claim and was not bona fide use in commerce, resulting in cancellation of the plaintiff’s trademark registration and a ruling on infringement in favor of the defendant.

In April 2014, Social Technologies LLC (“Social”) filed a trademark application to register the mark MEMOJI and Design in connection with software applications for mobile phones on an “intent to use” basis.  In January 2018, a notice of allowance issued in the trademark office, meaning that if Social filed an acceptable statement of use within the required time period, a trademark registration would issue.

In May 2018, Apple inquired about acquiring Social’s rights in the MEMOJI mark and Social declined.  Apple then acquired a third party’s rights in the word mark MEMOJI.  The rights that Apple acquired are subject to a trademark application filed after Social’s trademark application but alleging a date of first use that is earlier than Social’s application.  Therefore, the rights acquired by Apple may be superior to the rights owned by Social.  In June 2018, Apple launched a new iPhone function called MEMOJI.

In June 2018, Social filed its statement of use alleging that Social had used its trademark in interstate commerce.  The Trademark Office accepted Social’s statement of use and issued a trademark registration.  Social then filed a trademark infringement suit against Apple and sought declaratory judgement concerning the validity of its MEMOJI mark.  Apple filed counterclaims alleging that Social’s registration should be cancelled for lack of bona fide use in commerce.  Both parties moved for summary judgment on these claims.  (Apple also alleged infringement of the rights it now owned, but the parties did not move for summary judgment on these claims.)

In deciding the summary judgment motions, the district court held that no reasonable jury could find that Social made bona fide use of the MEMOJI mark in commerce and granted summary judgment in favor of Apple.  The court based its ruling on findings that Social launched a defective product that it rushed to market in an attempt to reserve its rights and support a legal claim against Apple.  The district court quoted emails from Social’s president regarding the reasons for rushing the release of the product, including stating that Social Tech “had to rush” to “release a basic but functional version of its app” to “reserve Social Tech’s rights in the Memoji mark.”  Social Tech’s president also directed that updates to fix bugs be “split . . . up in to individual updates, so it appears like we are doing more work” and stated that although the app was not functioning properly, “[t]he lawsuit is coming together nicely.  We should be done with the paperwork and forms in the next several days, then we are just waiting for the trademark registration to file the lawsuit and get PAID.”  It did not help Social’s case that the president also emailed, “Get your Lamborghini picked out!” in reference to the planned lawsuit.  The district court found that these facts indicated that Social did not release the app in the ordinary course of trade, but rather merely to reserve trademark rights.  Social Technologies LLC v. Apple Inc., 2019 WL 6873871 (N.D. Cal. 2019).

On appeal, the Ninth Circuit affirmed, recognizing that a trademark use must be sufficiently public for it to create an association among consumers between the mark and its owner and the court must consider the totality of the circumstances to determine if bona fide use of the mark was made.

Practical takeaways:

Bona fide use in commerce is a concept that is not always clear cut and should be considered in context, particularly whether the use is consistent with the applicant’s, and its industry’s, normal practices.  If you have questions as to whether your use is bona fide use in commerce, consult your trademark attorney.

Owners of “intent-to-use” based applications have a total of 36 months to put their mark in use provided they file appropriate extensions of time.   It is better to take an extension of time, if one is available, than to file a questionable statement of use.   Social could have taken an additional two and one-half years to put its mark into use.

In the United States, trademark rights are based on the “first to file,” or the “first to use,” whichever came first.  Even if you file a trademark application first and obtain a registration, there may be a prior trademark use that predates your application and may have priority over your rights.  Investigations prior to filing a trademark application can raise awareness of such risks.

Care should be taken with what is stated in email, or any communication.

The Count is 0-2 for the TTAB in Galperti Challenge to 2(f) Claims

Galperti, Inc. v. Galperti S.R.L.., 17 F.4th 1144 (Fed. Cir. 2021)

On November 12, 2021, in Galperti, Inc. v. Galperti S.R.L., the US Court of Appeals for the Federal Circuit vacated and remanded the Trademark Trial and Appeal Board’s (TTAB’s) decision, its second whiff in the case, determining it incorrectly held that:

  • Petitioner Galperti, Inc. (Galperti-USA) needed to demonstrate that its own use of the GALPERTI mark had acquired secondary meaning in order to serve as a basis to challenge the falsity of respondent, Galperti S.R.L.’s (Galperti-Italy’s), claim of substantially exclusive use.
  • Galperti-USA had to demonstrate that it was in privity with third-party users of the mark in order to rely on those uses to show falsity of Galperti-Italy’s claim of substantially exclusive use.

In April 2008, Galperti-Italy registered the mark GALPERTI for ironmongery in the form of metal hardware, namely flanges, ring-shaped fittings of metal, and forgings (see Reg. No. 3,411,812). The USPTO initially rejected Galperti-Italy’s application on the ground that the mark was unregistrable because it was primarily merely a surname.  Galperti-Italy successfully overcame that refusal by availing itself of Section 2(f) of the Lanham Act, arguing that the mark had acquired distinctiveness for the listed goods through substantially exclusive and continuous use in commerce (See 15 U.S.C. §1052(f)).

In April 2013, Galperti-USA petitioned to cancel Galperti-Italy’s registration, asserting among other things that Galperti-Italy had committed fraud during the prosecution by falsely asserting that it had made substantially exclusive use of the mark in the prior five years.  On Galperti-USA’s first appeal from a dismissal of its petition by the TTAB, the Federal Circuit vacated the Board’s rejection of the fraud charge and remanded for further consideration of that charge.  On remand, the TTAB again dismissed the fraud claim which the Federal Circuit again vacated and remanded for the following reasons.

First, the TTAB ruled that Galperti-USA must establish secondary meaning of its own uses of GALPERTI in order for those uses to be counted in determining the falsity of Galperti-Italy’s claim of substantially exclusive use.  Second, the TTAB ruled Galperti-USA had to demonstrate privity with other users of the mark during the prior five-year period to rely on those uses to show falsity of Galperti-Italy’s claim of substantially exclusive use.  The Federal Circuit found both of these rulings to be legal error.

On the first issue, the TTAB reasoned that a significant amount of marketplace use of a term, even if not as a source identifier for those users, undermines an applicant’s assertion that its own use has been substantially exclusive so as to create a prima facie case that the term has come to acquire distinctiveness as a source identifier for the applicant.

On the second issue, the Federal Circuit called it a “common-sense point” that the most relevant evidence in a Section 2(f) inquirer is the prevalence of third-party use of a term that the applicant claims it uses substantially exclusively.  In other words, everyone’s use counts, not just a challenger to the 2(f) claim.

Practical takeaways:

Applicants claiming substantially exclusive use under Section 2(f) must broadly consider third party uses, even if those uses do not rise to the level of trademark use, the prevalence of a term in a marketplace may undermine the “substantially exclusive” claim.  Also, challengers of registrations obtained under Section 2(f) may look broadly at the use in the marketplace and need not rely only on their own use to support their challenges to false substantially exclusive claims.

Comfort, Sleep and Confusion

Select Comfort Corp. v. Baxter, 996 F.3d 925 (8th Cir. 2021)

Plaintiffs, Select Comfort Corp., are the owners of the heavily advertised SELECT COMFORT and SLEEP NUMBER brands of adjustable air mattresses sold online, by phone, and (primarily) through company-owned stores nationwide. Defendant Dires, LLC, sells adjustable air mattresses primarily through an online retailer (“”) and engages in internet advertising and a call-center-based sales model to sell air beds.

Plaintiff’s produced evidence that Defendants engaged in a variety of tactics in concert that could, at least initially, mislead consumers.  Those included use of Plaintiff’s actual trademarks as paid search terms and as identical phrases in their own web-based advertising in text pages, combined text and graphical pages, as terms embedded in URLs, and in other fashions. Examples included website links that presented Plaintiffs’ trademarks as identical phrases (e.g., SleepNumber or In addition, Defendants used phrases similar to Plaintiffs’ trademarks, often with words broken up in a grammatically non-sensical fashion. Examples included the use of terms such as “Sleep 55% Off Number Beds” and “Comfort Air Beds on Sale” in online advertisements. Evidence of Defendant’s call center records revealed that operators did little to dispel any confusion and, at times, encouraged it.  Survey evidence demonstrated actual consumer confusion.

At summary judgment, the district court rejected as a matter of law an infringement theory based on presale or initial-interest confusion.  Initial-interest confusion is “confusion that creates initial customer interest, even though no actual sale is finally completed as a result of the confusion.”  (4 J. McCarthy, Trademarks and Unfair Competition, § 23:6 (4th Ed. 2010)).  At the time, the Eighth Circuit had not expressly adopted or rejected the initial interest confusion theory of infringement.

While the test for a likelihood of confusion is well-developed in the Eighth Circuit, some uncertainty remained as to when confusion must exist to support a trademark infringement claim.  The Circuit Court reviewed the history of the Lanham Act recognizing that a 1962 amendment to the Lanham Act eliminated reference to “purchasers” when describing actionable confusion which suggested that the point of confusion need not be at the time of purchase.  It also reasoned that the theory of initial-interest confusion recognizes that a senior user’s goodwill holds value at all times, not merely at the moment of purchase.  For those reasons, the Court concluded that the district court’s limiting the consideration of infringement to the moment of purchase was error, particularly as there was some question about the sophistication of the consumer in question.

Practical takeaways:

Businesses that rely on internet advertising should pay particular attention to actions that may cause initial interest confusion.  While this case is not likely to significantly increase the risk of infringement attributed to traditional keyword advertising involving trademarks (where the consumer conducts a search involving a trademark and is presented with ads for the competitor’s products), it does raise the stakes in the Eighth Circuit if the advertiser involves other tactics that, combined with internet advertising, may initially confuse consumers.  Advertisers should use care to avoid displaying competitors’ trademarks in online ads or domains.

Read the “Fine” Print

Chutter Inc. v. Great Management Group LLC, 2021 TTAB Nos. 91223018, 92061951, (Trademark Trial & App. Bd. September 30, 2021)

Another case dealing with the growing trend to reduce trademark fraud. The TTAB in September ruled that an attorney’s failure to read the contents of a declaration for a client’s trademark before signing it and his failure to inquire about its inaccuracies was “reckless disregard” for the truth that rose to the level of fraud.

Chutter Inc. moved to cancel Great Management Group’s registration for “Dantanna’s” for spices and restaurant services. Great Management Group’s counsel filed declarations that inaccurately stated that there were no pending actions against the registrations. The attorney, it seems honestly, argued there was no wrongful intent because he hadn’t read the documents closely enough to be aware of the false statement and thus could not have had the intent to defraud. This argument did not convince the Board.

The TTAB summarized it, “By failing to ascertain and understand the import of the document he was signing, far from conscientiously fulfilling his duties as counsel, [the attorney] acted in reckless disregard for the truth; nor did he take any action to remedy the error once it was brought to his attention.”  It noted sternly that to find otherwise could encourage similar behavior.

This is a relief for rightful trademark owners who have often been frustrated by the difficulty at proving fraud before the TTAB, which often fails to find fraud even when the evidence appears to be overwhelming to laypersons and often practitioners as well. For attorneys, besides the obvious lesson to read what one signs, the TTAB made clear that taking remedial measures is a necessary step once an inconsistency in a signed statement has been discovered.

Practical Takeaways.  Importantly, the case clarified that the standard for intent for the TTAB is that reckless disregard can amount to intent. While this standard for intent already exists in most circuit courts, it is notable in that the TTAB is consistently moving towards reducing fraud in trademark applications and registration.


Trolls Don’t Win in Monopoly

Design Basics, LLC v. Kerstiens Homes & Designs, Inc., Nos. 18-3202, 19-3118, 20-1515, 2021 U.S. App. LEXIS 17905 (7th Cir. June 16, 2021)

The Seventh Circuit severely criticized the actions of Design Basics LLC, calling the company a “troll’ for filing more than 100 copyright lawsuits.  The Seventh Circuit held that Design Basics could not sue Signature Construction Inc. for allegedly infringing 10 of Design Basic’s copyrighted floor plans for building suburban homes.

Design Basics owns thousands of copyrighted blueprints for homes.  Over the past ten years, Design Basics has filed over 100 cases for copyright infringement.  However, Design Basics has been unsuccessful as it owns only a very thin copyright in its blueprints.  The court ruled that the designs contained standard features and functional necessities that cannot be protected under copyright law.  Under such thin protection, Design Basics could only prevail on a claim for copyright infringement if the allegedly infringing design was virtually identical to one of Design Basic’s plans.  In this case, Signature’s homes did not meet the virtually identical standard.

Judge Diane Sykes criticized Design Basics, calling it a “copyright troll” and stating that its employees “trawl the internet in search of targets for strategic infringement suits of questionable merits.”  Judge Sykes further condemned Design Basics for using litigation as a business model and taking advantage of U.S. Copyright Law.

Judge Sykes also criticized Design Basics litigious intent behind this lawsuit and the multiple other suits it has filed in the past. Design Basics attempted to create a monopoly on the entire field of floor plan designs by creating and registering more than 2,800 design plans.  Additionally, Judge Sykes found that Design Basics incentivized its employees to “search the internet for litigation targets by paying a finder’s fee if they locate a prospective infringement.” Design Basics sought to secure quick settlements with potential defendants who would prefer to pay low settlement amounts than engage in costly litigation.

Practical Takeaways.  Although the court ruled in favor of the alleged infringer in this case, it is important to look out for copyright trolls and properly assess the risk involved if you receive an allegation of infringement.  Also, copyright protection for designs like floor plans and other architectural works can be quite limited, care should be exercised when asserting a claim of infringement.

Working on Friday the 13th

Horror Inc. v. Miller, No. 18-3123-cv, 2021 U.S. App. LEXIS 29479 (2d Cir. Sep. 30, 2021)

In September 2021, the Second Circuit upheld summary judgment in Horror Inc. v. Miller, in a case that is likely to continue to raise a new focus on the work made for hire doctrine in copyright law.  Miller wrote the screenplay for Friday the 13th in 1979.  In 2016, Miller sought to terminate the copyright of Manny, Inc. (Horror Inc.’s predecessor-in-interest) in the screenplay.  Under Section 203 of the Copyright Act, authors have a so-called termination right which allows authors to terminate and then regain copyright interests to works they have previously assigned.

The issue for the court was whether or not Miller was an employee of Manny, Inc. in 1979.   If Miller was an employee, his contribution was a work made for hire and Miller is not considered an author and he has no termination right.  If, however, Miller is an independent contractor, he is considered an author and maintains his termination rights and has the ability to “recapture” his rights in the screenplay.

Horror Inc. argued that Miller was an employee for hire because Miller was a member of the Writers’ Guild of America and participated in the producers’ bargaining agreement with the Writers’ Guild.  Miller had agreed to a Writers’ Guild standard form for the screenplay. (Notably, the form did not define the relationship as a “work made for hire.”)

Horror Inc. claimed that the district court erred in deciding that Miller was not an employee based on the National Labor Relations Act (“NLRA”) which due to the membership in the Writers’ Guild made Miller an employee.  The Second Circuit rejected this argument because there was no need to harmonize the NLRA with the Copyright Act.  The Copyright Act controlled, and labor law could not overrule, the overarching goals of copyright law.  Horror Inc. also claimed that Miller’s membership in and participation in the collective bargaining agreement should have held great weight in the analysis in determining whether Miller was an employee for purposes of the work made for hire doctrine.  The Second Circuit found that the appropriate factors whether Miller was an employee were those related to the common law of agency.  This, in part, also explained why the court rejected Horror Inc.’s argument that it was the custom in the screenwriter industry to treat those guild members as employees for collective bargaining purposes and, as such, should be treated as employees for purposes of copyright law.

Ultimately, weighing a number of factors, such as skill, employee benefits, tax treatment, the lack of additional projects, duration of the work provided, and method of payment, the Second Circuit affirmed the district court’s finding that Miller was an independent contractor who was entitled to termination rights.

Practical Takeaway.  The exercise of termination rights has been a more recent development in copyright law – but one with far-reaching consequences.   Whether or not a work is considered a work made for hire can determine whether a creator has the ability to terminate rights.  It seems likely that more of these types of lawsuits may occur in the future.   Authors and those having copyrightable works prepared should come to a clear and written understanding of who will own the work.

Not Quite Perfect Instagram Caption

O’Neil v. Ratajkowski, 2021 U.S. Dist. LEXIS 185675 (S.D.N.Y. Sep. 28, 2021)

A SDNY judge held on summary judgment in September that model and activist Emily Ratajkowski infringed a paparazzo’s photograph of herself when she posted the image to her Instagram story.

Judge Analisa Torres held that photographer Robert O’Neil established copyright infringement because he fulfilled the elements of a valid copyright infringement claim, namely that he owned a valid copyright to the photo and that the photo was original. Ratajkowski argued that adding the caption “mood forever” underneath the photo was transformative and therefore fell under copyright’s Fair Use defense.  Ratajkowski noted that the photo featured her holding up a bouquet of flowers completely obscuring her face to prevent O’Neil from taking photos of her. Thus, the caption is transformative and is related to the unwanted nature of photo. Judge Torres was not persuaded by Ratajkowski’s arguments.

An important nuance in this case was that the caption was held to be essentially self-promotional and positive towards the photograph. Had the caption been directly critical of the photographer or the paparazzi generally, it may have been found as a fair use of the copyrighted work.

Ratajkowski will have a chance to refine her Fair Use defense and try again since the ruling was on a motion for summary judgment.

This case generated a significant amount of attention due to Ratajkowski’s fame and that O’Neil was represented by the highly visible intellectual property attorney Richard Liebowitz, who was in the news from his suspension from the practice of law in New York this November. Counsel for Ratajkowski stated to the press and argued in court, before the suspension, that the case was frivolous and the latest in a “long series of sanctionable and improper lawsuits” filed by Liebowitz.

Practical Takeaway: Adding a simple caption to a copyrighted work is not transformative enough to fall under the Fair Use defense to copyright infringement.  Businesses and individuals should be careful when using another’s photograph or other copyrighted work as the Fair Use defense only applies in certain situations.


Assignor Estoppel is Still Alive with Limitations

Minerva Surgical, Inc. v. Hologic, Inc., 141 S. Ct. 2298, 210 L. Ed. 2d 689 (2021).

The doctrine of “assignor estoppel” prevents one owner from challenging the validity of a patent after assigning the patent to another for value.  In Minerva v. Hologic, the U.S. Supreme Court limited application of this doctrine, holding that when an assignor warrants that a patent claim is valid, his later denial of validity breaches the principle of fair dealing but that when the assignor has made neither explicit nor implicit representations in conflict with an invalidity defense, then there is no unfairness to prevent the defense’s assertion.

Under the ruling, validity challenges are thus still allowed in some situations, including: (1) when an employee assigns to his employer patent rights in any future inventions he may develop during his employment; (2) when a later legal development renders a prior warranty irrelevant; and (3) when there is a post-assignment change in patent claims after an inventor assigned a patent application, rather than an issued patent (for example, when new claims are materially broader than older ones and the assignor did not warrant the new claims’ validity).

Although now limited, the doctrine of assignor estoppel continues as an equitable matter relating to matters of fairness.  Accordingly, patent assignees should be careful when deciding whether to expand the scope of assigned patent applications or reissued patents and ensure that the assignor makes representations that would bar later validity challenges when acquiring a patent.

Functional Claims Are in Peril 

Amgen Inc. v. Sanofi, Aventisub LLC, 987 F.3d 1080 (Fed. Cir. 2021).

A genus claim—a patent claim that covers not just one specific chemical, but an entire group of related chemicals—is often a key feature of biotechnology patents.  In Amgen Inc v. Sanofi, Aventisub LLC, the Federal Circuit invalidated two Amgen antibody patents, finding that the purely functional genus claims at issue were too broad, citing a lack of enablement.  The case centered on patents covering a class of protein (PCSK9) inhibitor antibody drugs.  These antibodies bind to the PCSK protein and inhibit it from binding to LDL-R, resulting in lower cholesterol.  A functional claim describes an invention in terms of what it does, rather than describing its structural components.  In this case, the claims defined an antibody solely in terms of what that antibody does – whether it is binding to a particular target or blocking interactions between that target and another molecule.  The claims at issue were purely functional, and how many antibodies fell within the scope of the genus was the center of the dispute.  Sanofi challenged the validity of the patents for violation of the written description and the enablement requirements, that is, whether the full scope of the claims were adequately described in the specification and whether someone could make and use them without an unreasonable amount of experimentation, asserting that millions of compounds might meet the criteria and that the patents didn’t adequately explain how to identify which ones might work.

In invalidating the claim, the Federal Circuit assessed eight factors in finding a lack of enablement, (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims.  It also determined enablement was a question of law, overturning a jury verdict finding that the claims had been properly enabled.  Under the Federal Circuit ruling, patents with purely functional claims will likely be more vulnerable to invalidation as lacking enablement.  Amgen currently seeks review of this case by the U.S. Supreme Court.

A Pathway for Challenging Patent Validity—Do Not Forward Twice

In re Vivint, Inc., 14 F.4th 1342 (Fed. Cir. 2021).

The Federal Circuit also spoke in 2021 on whether it was proper to try to invalidate a patent through an ex parte reexamination request setting forth the same arguments that had already been tried in an unsuccessful petition for Inter Partes Review (“IPR”).

Vivint sued for infringement of several patents, and in response, attempted to invalidate them at the Patent Office.  For one of the challenged patents, filed three IPR petitions, but the Patent Trial and Appeal Board (“PTAB”) declined to institute a trial on any of them—the PTAB denied the first two petitions on the merits and the third at its own discretion. subsequently filed a request with the Patent Office, almost identical to the third petition, for ex parte reexamination, which the Patent Office ordered.  Vivint petitioned the Patent Office to dismiss the reexam, arguing did not raise a substantial new question of patentability. The Patent Office declined Vivint’s petition and ultimately issued a final rejection of all claims of the patent.

The Federal Circuit first found had raised new questions of patentability because the re-exam arguments were not previously decided on the merits.  That finding was ultimately inconsequential, though, because it also held the Patent Office abused its discretion first by ordering the reexamination and then when it refused to terminate the proceeding in response to Vivint’s request.  The court noted the decision was limited only to requests from third parties and that the Patent Office was not precluded from instituting re-exams on its own initiative.

A Design is Limited to the Article of Manufacture

In re SurgiSil, LLP, 14 F.4th 1380 (Fed. Cir. 2021).

On October 4, 2021, the Federal Circuit reversed a decision of the PTAB affirming an examiner’s rejection of SurgiSil’s design patent application for a lip implant in which a sculpting tool called a stump was applied as the prior art.  The court reversed the PTAB’s holding that the claimed design is not limited to the particular article of manufacture identified in the claim.  Instead, the court held a design claim is limited to the article of manufacture identified in the claim and emphasized that patents for designs were contemplated in connection with objects, not an abstract impression or a picture.

This decision was something of a natural follow-on to a 2020 decision, Curver Luxemburg, SARL v. Home Expressions Inc., in which the court held an alleged infringer’s baskets that incorporated a claimed design pattern did not infringe because the design patent was limited to the claim language, which referred to a pattern for a chair, despite the fact the figures showed only the pattern without any specific illustrations of the chair or other article.

The court has thus affirmed both that a design is inseparable from the article to which it is applied, and the design is limited to the article of manufacture identified in the claim.

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McNees Intellectual Property Update is presented with the understanding that the publisher does not render specific legal, accounting or other professional service to the reader. Due to the rapidly changing nature of the law, information contained in this publication may become outdated. Anyone using this material must always research original sources of authority and update this information to ensure accuracy and applicability to specific legal matters. In no event will the authors, the reviewers or the publisher be liable for any damage, whether direct, indirect or consequential, claimed to result from the use of this material.