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Spotlight On Upcoming Oral Arguments – August 2022 – Trademark


The following arguments will be available to the public live.
Access information will be available by 9 AM ET each day of
argument at:
https://cafc.uscourts.gov/home/oral-argument/listen-to-oral-arguments/.

Monday, August 1, 2022

Arendi S.A.R.L. v. LG Electronics Inc., No. 21-1967,
Courtroom 201

Arendi appeals from a District of Delaware decision granting
LG’s motion to dismiss. In 2012, Arendi sued LG for
infringement of U.S. Patent No. 7,917,843 (“the ‘843
patent”) (“Arendi I“). In Arendi
I
, after initially identifying 192 products that purportedly
infringe the ‘843 patent, Arendi only provided infringement
claim charts for one product, LG’s Rebel 4 mobile phone,
claiming that it was representative of all of the accused products.
LG disagreed that the Rebel-4 product was representative, but the
parties ultimately identified 8 devices that they agreed were
representative of all of the accused products. Arendi did not,
however, provide claim charts for the additional representative
devices. When Arendi’s expert proffered an infringement opinion
on those other representative devices (“the Non-Rebel 4
Products”) LG filed a motion to strike, which the district
court granted.

In response, Arendi filed a second lawsuit accusing LG of
infringement of the ‘843 patent based on the Non-Rebel 4
Products (“Arendi II“). The district court
granted LG’s motion to dismiss Arendi’s complaint on the
grounds that it violated the claim-splitting doctrine.
Specifically, the Court opined that it understood that Arendi had
dropped its infringement allegations against the Non-Rebel 4
products in Arendi I, and therefore was precluded by the
claim-splitting doctrine from raising the same allegations in
Arendi II.

Arendi contends that the claim-splitting doctrine only applies
when the products are “essentially the same.” Relying on
the Federal Circuit’s holding in Acumed LLC v. Stryker
Corp
., Arendi argues that a product is “essentially the
same” only if the difference are “unrelated to the
limitations in the claim of the patent.” Arendi notes that LG
asserted in Arendi I that the Non-Rebel 4 Products are
materially different from the Rebel 4 product, which were the only
products litigated in Arendi I. Arendi contends that the
district court thus misapplied the claim-splitting doctrine, and
its decision granting LG’s motion to dismiss should be
reversed.

LG contends that the claim-splitting doctrine is applicable
because Arendi II involves the exact same patent and the
exact same products that Arendi accused in Arendi I. LG
argues that Arendi mischaracterizes Arendi I.
Specifically, LG points out that the district court struck the
portions of Arendi’s expert report regarding the Non-Rebel 4
Products due to Arendi’s failure to provide the requisite claim
charts for those products. LG further notes that neither LG nor the
district court ever stated that the Non-Rebel 4 Products were
not part of Arendi I. Thus, Arendi contends that
the district court properly dismissed Arendi’s complaint.

Wednesday, August 3, 2022

Provisur Technologies, Inc. v. Weber, Inc., No.
21-1942, Courtroom 201

Weber, Inc. (“Weber”) filed a petition for inter
partes
alleging that all of the claims of U.S. Patent No.
6,997,089 (“the ‘089 patent”) were invalid as
obvious. In its final written decision, the Board held that all but
two claims were unpatentable.

On appeal, Provisur argues that the Board abused its discretion
by denying its motion to exclude evidence that Weber improperly
withheld until its Reply. Provisur argues that Weber had possession
of the essential new evidence prior to drafting its petition and
that withholding this evidence until its reply brief was unfairly
prejudicial. Provisur further argues that the Board’s denial of
Provisur’s motion was not harmless error because the Board
heavily relied on the new evidence in its final written
decision.

Weber argues that the Board did not abuse its discretion by
denying Provisur’s motion and considering Weber’s evidence,
which the Board found to be “highly probative.” Weber
disputes Provisur’s charge that it provided “new”
evidence. Instead, Weber contends that the evidence was proffered
to rebut Provisur’s “unexpected” argument in the
Patent Owner Response and that the Board has broad discretion to
admit such evidence. Further, according to Weber, Provisur was not
prejudiced by the “late” evidence because Provisur had
the opportunity to “extensively” depose Weber’s
expert and addressed the evidence in its sur-reply, motion to
exclude, and during oral argument.

Thursday, August 4, 2022

Sanderling Management Ltd. v. Snap Inc., No. 21-2173,
Courtroom 201

Sanderling sued Snap, alleging that certain features of
Snap’s Snapchat application infringed three of Sanderling’s
patents. At the pleading stage, the district court granted
Snap’s motion to dismiss with prejudice, on the grounds that
each of the asserted claims were invalid under 35 U.S.C. §
101. The district court held that the claims were directed to the
abstract idea of “providing information based on meeting a
condition” and failed to recite an inventive concept that
amounted to “significantly more” than the abstract
idea.

On appeal, Sanderling argues that the district court erred at
all steps of its § 101 analysis and ultimately hindered
Sanderling’s access to a fair process by dismissing the case
with prejudice at the pleadings stage. Sanderling first contends
that the district court failed at step one by vastly
oversimplifying the invention recited by the claims. Likening its
invention to the one at issue in McRO, Inc. v. Bandai Namco
Games Am. Inc.,
837 F.3d 1299 (Fed. Cir. 2016), Sanderling
contends that the claimed invention improves computer functionality
by “dynamically” and “almost instantly” sending
processing functions to mobile devices “with no requirement
for a prior image to be taken or generated by the user or the
mobile device.” Sanderling next argues that the district court
erred at step two by failing to accept the allegations in the
Complaint as true and trivializing the PTO’s findings.

Snap argues that each of Sanderling’s claims are without
merit. First, Snap disagrees with Sanderling’s view that the
district court oversimplified its claims. Arguing instead that the
district court made its judgment based on the claims’ plain
language, while Sanderling’s argument relies on language that
does not appear anywhere in the claims. Second, Snap disagrees with
Sanderling’s argument that the district court erred at step
two, contending that the district court had sufficient evidence to
decide this step as a matter of law. Specifically, Snap argues that
the claimed invention merely uses generic computer components to
implement an abstract idea and the purported improvements over the
prior art are not actually recited by the claim.

Philanthropist.com, Inc. v. General Conference Corp. of
Seventh-Day Adventists
, No. 21-2208, Courtroom 201

Philanthropist.com is the owner of the Adventist.com domain
name. In a cease-and-desist letter, the General Conference
Corporation of Seventh-day Adventists (“General
Conference”) alleged that Philanthropist.com’s use of the
Adventist.com domain name infringed on its ADVENTIST trademark. In
the letter, the General Conference threatened to file suit against
Philanthropist.com if it did not transfer the domain name to the
General Conference, a threat it followed through on when
Philanthropist.com refused transfer its rights. In response,
Philanthropist.com petitioned to cancel the trademark. The Board
granted the General Conference’s motion to dismiss the petition
for failure to establish entitlement to a statutory cause of
action.

On appeal, Philanthropist.com argues that the plain text of the
Lanham Act, which requires only a belief in damage, entitles
Philanthropist.com to a statutory cause of action to petition to
cancel the General Conference’s ADVENTIST mark. Specifically,
Philanthropist argues that it owns the Adventist.com domain name
and that the General Conference threatened and then followed
through on its threat to sue Philanthropist.com for the use of its
domain name. Thus, Philanthropist.com contends that there is a
direct connection between the harm to its interests and the generic
trademark that it is seeking to cancel.

In response, the General Conference argues that
Philanthropist.com does not have standing to bring the appeal and
that, in any event, it has failed to establish that the Board erred
in concluding that Philanthropist.com did not show an entitled to a
statutory cause of action. First, the General Conference contends
that Philanthropist.com lacks Article III standing because it
cannot demonstrate that is has suffered a concrete, particularized
injury that is both actual and imminent. Second, the General
Conference contends that the Board properly concluded that
Philanthropist.com failed to establish a legitimate commercial
interest in the “zone of interest” or a reasonable belief
of damages caused by the registration of the General’s
Conference’s ADVENTIST mark.

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about your specific circumstances.



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