This week in IP: SCOTUS rejects American Axle, Ireland commits to UPC referendum, and more
COVID vaccines top Clarivate’s new brands list; Fed Circuit reverses Coca-Cola’s TTAB win; Skechers sues Brooks; USPTO to retire Public PAIR tool; CCB sees cricket complaint
Five former PTAB judges reveal how to succeed at the board
When in-house counsel pick their Patent Trial and Appeal Board teams, they often like to get former administrative patent judges on side to take advantage of their skills and experience, or so they told Managing IP this week.
We got in touch with five of these former APJs who now work at Finnegan, Wilson Sonsini and three other firms to find out how other lawyers could make themselves stand out at the PTAB and avoid annoying panels.
Click hereto read the full article.
Other Managing IP stories published this week include:
SCOTUS rejects American Axle appeal
The US Supreme Court has rejected an appeal request in American Axle v Neapco, it emerged yesterday, June 30, once again dashing hopes of a judicial fix for the uncertain legal framework created around patent eligibility law.
The decision was made a week after the high court considered the matter in conference and just over a month after the solicitor general recommended that the court take up the case.
SCOTUS requested the solicitor general’s input on American Axle, a case in which a drive shaft patent was invalidated on the basis of Section 101 under Title 35 of the US Code, in May 2021.
Responding a year later, Elizabeth Prelogar, the solicitor general, said inventions like the one at issue in American Axle had “historically been viewed as paradigmatic examples of the ‘arts’ or ‘processes’ that may receive patent protection if other statutory criteria are satisfied”.
She also stated that the Court of Appeals for the Federal Circuit had “erred in reading [SCOTUS’s] precedents to dictate a contrary conclusion”.
In 2019, the Federal Circuit invalidated American Axle’s patent on the basis that it merely described a desired result and was thus ineligible for patent protection under Section 101.
The following year, the case was considered for en banc review. But the 12 judges from the Federal Circuit were evenly divided on whether American Axle should be reheard by the whole court, illustrating the mess of the patent eligibility legal framework in the US.
Several prominent politicians and groups had asked SCOTUS to take up the case. In March 2021, Senator Thom Tillis, former circuit judge Paul Michel, and former USPTO director Dave Kappos filed an amicus brief arguing that the high court should hear American Axle to finally fix Section 101.
COVID vaccines top Clarivate’s new brands list
COVID vaccines including BioNTech’s Comirnaty were among the biggest new brands to emerge over the past two years, according to a new report from Clarivate published yesterday, June 30.
Clarivate’s top 100 new brands list was based on a trademark strength score applied to more than 20 million applications filed in 2020 and 2021.
The score was based on metrics including market footprint, geographic coverage, and online presence, measured by registered domains associated with a particular brand.
Fifteen of the top 100 were pharmaceutical brands, including six COVID vaccines. BioNTech and Novavax both had more than one brand on the list.
The list included six Apple brands, including Apple One and Apple Fitness +, which was the most of any company. French sportswear maker Decathlon owned four of the top 100.
Europe led the way with 50 brands in the top 100. The list also included 23 Chinese brands and 21 from the US.
Clarivate’s head of intellectual property content strategy Robert Reading noted that the list included a mix of new brands as well as names and logos arising from corporate mergers, re-branding, and brand line extensions.
English Premier League club Liverpool FC was the only sports team on the list.
During the period covered by the report, Liverpool won the Premier League for the first time in more than 30 years.
Other notable inclusions on the top 100 were the Rivian and Mercedes-EQ electric vehicle brands, and ByteDance’s TikTok.
Ireland commits to UPC referendum
The Irish government will hold a referendum on its membership of the unitary patent and Unified Patent Court system in 2023 or 2024, it confirmed on Tuesday, June 28.
The country’s participation in the UPC and the new unitary patent system required a referendum under Irish law, the government said.
Before this week, Ireland had signalled its intention to join the UPC but had given no indication of when it would organise the referendum.
The delay caused frustration among Irish intellectual property lawyers and businesses, who lobbied the government to finalise its plans.
Tánaiste (deputy prime minister) Leo Varadkar said on Wednesday that the UPC vote would be held alongside other referendums, which had yet to be determined.
“We will consider the other referendums we have coming up and see how best to fit this one in.
“It won’t be a standalone referendum, so it won’t be held this year anyway. But it could be next year or concurrent with the local and European elections in 2024,” Varadkar said.
He added that it would take time to produce a public information campaign on the benefits of the unitary patent.
Ireland would be the only common law jurisdiction in the UPC, with the UK having withdrawn from the system because of Brexit.
Fed Circuit reverses Coca-Cola’s TTAB win for Indian soda
The US Court of Appeals for the Federal Circuit reversed a Trademark Trial and Appeal Board decision on Wednesday, June 29, that cancelled two marks for ‘Thums Up’ and ‘Limca’ sodas.
The Federal Circuit held that Coca-Cola had failed to establish reputational injury in the US or prove misrepresentation by Meenaxi Enterprise under Section 14(3) of the Lanham Act.
But the circuit disagreed with Meenaxi’s argument that the territoriality doctrine – which sets out that a trademark is recognised as having a separate existence in each sovereign territory in which it is registered or legally recognised as a mark – applied in this case.
Coca-Cola initiated a cancellation action at the TTAB in 2016, claiming the registrant had misrepresented the source of the ‘Thums Up’ and ‘Limca’ sodas.
The sodas had been available in the Indian market since the 1970s. Coca-Cola purchased the local company that manufactured the drinks since 1993.
Meenaxi has sold beverages with the concerned marks to Indian grocery stores in the US since 2008 and secured registrations in 2012.
The TTAB sided with Coca-Cola, holding that its ‘Thums Up’ and ‘Limca’ marks “likely would be familiar to much of the substantial Indian-American population in the US”.
Judges Timothy Dyk and Kara Stoll, who delivered the majority decision, found that the resale of Coca-Cola’s products by distributors in the US didn’t prove lost sales by the company.
They also noted that Coca-Cola didn’t present any evidence to demonstrate that it sold ‘Limca’ in the US and only offered ‘Thums Up’ in its stores in Atlanta and Orlando.
Skechers claims Brooks Sports’ ‘5’ logo infringes its TM
US multinational footwear company Skechers sued athletic equipment business Brooks Sports in the US District Court for the Central District of California on Tuesday, June 28, alleging that the stylised number ‘5’ on some of its shoes was confusingly similar to Skechers’ ‘S’ logo.
Sketchers also argued that Brooks placed its ‘5’ mark on the top of the tongue of its shoes, just like it displayed its logo on its footwear. The allegedly infringing mark was also placed in a location separate from any other markings, which enhanced the chances of confusion, said Skechers.
According to the suit, Skechers contacted Brooks’ counsel in February and demanded that the company immediately cease and desist from using the ‘5’ mark. But Brooks disagreed that its mark infringed Skechers’ rights.
Skechers has already obtained a preliminary injunction from the Dusseldorf Regional Court in Germany stopping Brooks from importing, exporting, advertising or selling any products with the mark.
But Skechers complained that Brooks continued to engage in infringing activities in the US despite its repeated cease and desist demands.
As well as injunctive relief, Skechers requested actual and enhanced damages, costs and reasonable attorney fees.
USPTO to retire Public PAIR tool
The USPTO will fully replace its Public Patent Application Information Retrieval tool for electronically filing and managing patent applications with its Patent Center system on August 1, it was announced on Wednesday, June 29.
The Patent Center system has been available to the public since 2017 and incorporates all the functions of Public PAIR. The system also allows users to download multiple documents at once within a single PDF or ZIP file.
USPTO director Kathi Vidal said the office was committed to providing its users with reliable tools that offered the best experience possible.
“As America’s innovation agency, our systems need to be nimble, intuitive, and seamless for our users,” she said.
“Not only are we dedicated to improving Patent Center, but we are also focused on examining all our systems to ensure that they meet the high-quality standards that our users deserve. This is the first step.”
The office said it would continue to use feedback received from stakeholder listening sessions, Patent Center training programmes and other events to further refine the system.
Copyright Claims Board sees cricket complaint
Copyright Brand Protection, the legal partner of Sky Group, filed a complaint at the US’s new Copyright Claims Board over footage from cricket matches between Australia and Sri Lanka on Monday, June 27.
The company filed the complaint against app developer HA Sports Studio, and said Sky Sports held broadcasting rights for Australia v Sri Lanka T20 cricket matches.
The complaint stated that the developer’s apps made footage available from these licensed properties.
“To our knowledge, the developer's use of the footage in the mobile applications has not been licensed by the rights owner and therefore violates the exclusive rights granted to Sky Sports.”
Copyright Brand Protection said it would like this dispute to proceed as a smaller claims proceeding, which includes a $5,000 monetary limit instead of the standard CCB small claims case.