Patent Priority Claim: Inherent Disclosure is Enough by Stephen Lewellyn, Esq.

On September 20, 2016, the Federal Circuit issued a precedential opinion holding that inherent disclosure in a priority document is enough to meet the written description requirement for a patent claim in a later filed patent application.

The case involves U.S. Patent Number 5,344,915, owned by Abbot, and directed toward Tumor Necrosis Factor α binding protein (TBP-II). The U.S. patent application leading to this patent was filed in 1990 and claimed priority to foreign patent applications filed in 1989. The issue in this case is whether the U.S. patent application was entitled to the 1989 filing date of the foreign applications. If the U.S. patent application is not entitled to the early filing date, the U.S. patent would be invalid over a prior art publication made after the 1989 filing date but before the 1990 filing date.

To be entitled to the early filing date, the claims in the U.S. patent must be supported by the written description contained in the earlier foreign patent applications. The problem for Abbot centered on whether that written description existed. The Court, affirming the lower court’s holding, found that while the written description did not identify the sequence claimed by the U.S. patent, the written description did explain how to make TBP-II. On this basis, the Court determined that the claimed sequence was inherently disclosed in the written description and the U.S. patent was entitled to the early, 1989 filing date. Consequently, the U.S. patent was held to be valid over the intervening prior art publication – giving Abbott a win in a 20 year-long battle related to this patent.


Pizza by the Beach: TTAB Issues Precedential Opinion re: Issue Preclusion and Standing by Alexandra Taylor, Esq.

On August 29, 2016, the Trademark Trial and Appeal Board issued a precedential opinion holding that issue preclusion applies to Board determinations of standing. NH Beach Pizza LLC initially filed a cancellation proceeding against Cristy’s Pizza Inc. seeking cancellation of the BEACH PIZZA word mark, alleging that it will be damaged by the generic term “beach pizza”, and that consumer confusion has already occurred in the marketplace. The Board dismissed said cancellation proceeding for lack of standing: “Specifically, the Board found that the record was ‘utterly devoid of any evidence concerning the nature of Petitioner’s commercial activities and its interest in Respondent’s registered BEACH PIZZA mark.’”

Several months later, NH filed a second cancellation proceeding, alleging the same grounds as the above-mentioned cancellation proceeding. Cristy’s Pizza responded by filing a motion for summary judgment stating that NH’s claims are barred by issue preclusion, as the issue of standing was previously decided by the Board. Upon review, the Board granted Cristy’s Pizza’s motion for summary judgment and dismissed the proceeding with prejudice: “Because issue preclusion bars Petitioner from re-litigating the issue of standing decided in the Prior Action, Petitioner cannot prove the threshold requirement of standing in this proceeding.” For a full review of the Board’s Order and the elements of issue preclusion, visit the link above.


The Weight of an Expert Report by Kyle Chapin, Esq.

On August 19, 2016, the Federal Circuit vacated the district court’s summary judgement ruling which previously held the claims of Semcon’s U.S. Patent No. 7,156,717 (“‘717 Patent”) invalid as being anticipated by U.S. Patent No. 6,010,538. In its motion for summary judgment, Micron relied heavily on its expert’s report to show the claims of the ‘717 Patent were invalid, whereas Semcon chose not to rebut Micron’s expert report with an expert of their own.

This decision not to rebut the expert report appeared to have swayed the district court in holding the ‘717 Patent invalid on summary judgement. However, the Federal Circuit, in this ruling, reminded us that a party who does not submit a competing expert report should not automatically be seen as having rung their own death knell.


Donut You Know? University of Texas sends Cease and Desist Letter to Local Donut Shop over “Hook ‘Em” Shaped Donut by Alexandra Taylor, Esq.

Football means lots of things: competition, comradery, and community. And nothing quite brings a community together like football. It is not uncommon for local businesses to get involved in support of the town’s team. Enter Donut Taco Palace, an Austin, Texas eatery that sells donuts in the shape of the “hook ‘em” sign, a sign used by fans to support the University of Texas’ Longhorns. Donut Taco Palace started selling the donuts back in 2012 as a homage to UT fans under the name “Longhorn Donuts”. Years later, the eatery has now received a cease and desist letter from UT, citing the University’s trademark rights as basis for Donut Taco Palace to stop sales of their donut. In the letter, the University states its concerns about Donut Taco Palace’s use of the LONGHORN Trademark, and requests that the eatery discontinue sale of the “Longhorn Donuts”.

The University is no stranger to maintaining its  trademark rights, with well over 300 trademarks on file at the United States Patent and Trademark Office. The University also owns a plurality of“Longhorn” trademarks, and even owns a design mark in the shape of the “hook ‘em” sign: horns(Registration No.: 4,535,612). A holder of trademark rights is required to police its trademark and infringement of the trademark in order to keep its own rights valid. But this begs the question, where do you draw the line? Would a consumer really be confused as to the source of the donuts sold at Donut Taco Palace? For now, Donut Taco Palace continues to sell their “hook ‘em” sign donut under a new name, El Toro.


Cancer Immunotherapy USPTO Pilot Program by Kyle Chapin, Esq.

On February 1, 2016, the White House announced a $1 billion program to jumpstart operation “Moonshot”, an initiative by President Obama to eliminate cancer. The USPTO responded in establishing “Patent 4 Patients”, a pilot program that will advance patent applications directed towards cancer immunotherapy out of line and applicants receiving a final decision in one year or less after they are received for free. A service that could save applicants between $1,000.00 and $4,000.00, depending on the applicant.

To be eligible for this pilot program, the application must contain at least one claim relating to the treating of cancer using immunotherapy and file a grantable petition with the USPTO to be included in the program. In addition to newly filed applications, this program is available to (1) applications that have not yet received their first Office Action; (2) applications where the petition is filed with a Request for Continued Examination; or (3) applications that are not currently under a final office action and the claim regarding the immunotherapy is the subject of an active Investigational New Drug application that has entered Phase II or Phase III clinical trials.

Federal Circuit: “Common Sense” is not a substitute for missing claim elements in an obviousness analysis

On Aug. 10, 2016 the Federal Circuit overturned a Patent Trial and Appeal Board final written decision in IPR2014-00208 that found various claims of U.S. Patent No. 7,917,843 obvious. In overturning the Board’s decision, the Federal Circuit found the Board had misapplied the law on the “permissible use of common sense in an obviousness analysis.”

The Federal Circuit acknowledged that “common sense,” in certain instances, has a place in an obviousness analysis, but rejected the notion that “common sense” is a substitute for a claim element missing from the prior. “Our cases repeatedly warn that references to ‘common sense’ – whether to supply a motivation to combine or a missing limitation – cannot be used as a wholesale substitute for reasoned analysis and evidentiary support, especially when dealing with a limitation missing from the prior art references specified,” the Court explained.

In a nutshell, this case should provide some much needed ammunition in combating obviousness contentions when a claim element is missing from the prior art and “common sense”alone is used to fill the gap.

Prince: Branding Extraordinaire by Alexandra Taylor, Esq.

Prince Rogers Nelson is known throughout the world for his endless musical and artistic greatness and his unforgettable role in the entertainment world. But a role you may not think of for Prince: branding expert. Born Prince Rogers Nelson, the artist continuously evolved his brand over the course of his career. In 1993, Prince’s frustrations with his then record label, Warner Bros., resulted in Prince changing his name to an unpronounceable symbol in an attempt to get out of his contractual obligations. This symbol famously came to be known as the Love Symbol. While this move may not have been effective for his legal obligations, it grabbed the attention of the music consuming public everywhere. Prince’s rebranding to the Love Symbol resulted in the public further evolving his brand, coining him the Artist Formerly Known As Prince. After Prince’s contract with Warner Bros. expired in 2000, he returned to his signature “Prince”, but continued using the Love Symbol on his album artwork and in the form of a guitar.

Prince knew not only how to brand himself, but just as importantly, how to protect his brand. He diligently went after unauthorized uses of his works, taking on giants such as YouTube and eBay, and even individual YouTube users; he successfully regained the rights to his music from Warner Bros. Prince went on to obtain federal trademark registrations for the Love Symbol alone, all of which are currently live:

  • Registration 1849644 for “entertainment services; namely, live performances by a musical group”
  • Registration 1871900 for “posters and publications; namely, fan club magazines, [ comic books, activity books ] and books pertaining to a variety of subjects; bumper stickers and stickers”
  • Registration 1860429 for “clothing for men, women, and children; namely, T-shirts, shirts, jackets, footwear, socks, headbands, wristbands, jerseys, shorts, hats/caps, and scarves”
  • Registration 1822461 for “sound recordings; namely, prerecorded audio cassettes, phonograph records and compact discs featuring music and entertainment; pre-recorded videotapes featuring music and entertainment”

Prince later gained the rights to a plurality of “PRINCE” trademarks.

There is a lot that can be learned from Prince: Rebranding can be successful, if it’s done right. Whether a company is looking to rebrand or an individual is seeking to change their image, rebranding should have a purpose. That purpose will give it weight and will have an actual effect on the public. A more cautionary tale for the up and coming: protect your intellectual property from the start. An artist, fashion designer, someone looking to create a public persona with a name, should recognize the importance of intellectual property and set out to acquire trademark rights in their name, before they make it to the top and get into contracts that may take those rights out from under them. There is of course a balance, as with each trademark you own comes another set of obligations to police and protect your trademark.

With his resources and creativity, Prince evolved his brand and image throughout the course of his career. Prince continued to stay relevant in an ever changing world, perhaps by staying true to his brand. It makes you wonder, what is my brand?