• Rescuing Rapunzel: Suffolk Law Professors and students work to keep fairy tale princess in the public domain

    United Trademark Holdings Inc. is attempting to trademark Rapunzel (and likely has plans for other fairy tale princess names) for its line of dolls. Law Professors Rebecca Curtin and Loletta Darden of Suffolk University Law School, along with help from Suffolk’s Intellectual Property and Entrepreneurship Clinic, filed an opposition to United’s trademark registration on May 9, 2018. In their Notice of Opposition, they argue that the name Rapunzel belongs to the public.  “No company should ever…

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  • 係止



    $$ At the same time the arm 24 on the multi-function button 22 latches in latch aperture 42 in the floor 40 of the drawer 18, to prevent …

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  • Judge Newman’s dissent on en banc in XITRONIX CORPORATION

    Judge Newman’s dissent:

    I write because of the importance of this decision to
    the judicial structure of patent adjudication, and the
    future of a nationally consistent United States patent law.
    In this case, the complaint states that the asserted violation
    of patent law may support violation of antitrust
    law—a Walker Process pleading based on charges of fraud
    or inequitable conduct in prosecution of the patent appli-
    cation in the Patent and Trademark Office.1 The threejudge
    panel assigned to this appeal held that the Federal
    Circuit does not have jurisdiction, did not reach the
    merits, and transferred the appeal to the Fifth Circuit.2
    This jurisdictional ruling is contrary to the statute governing
    the Federal Circuit, and contrary to decades of
    precedent and experience. Nonetheless, the en banc court
    now declines to review this panel ruling.
    I write in concern for the conflicts and uncertainties
    created by this unprecedented change in jurisdiction of
    the Federal Circuit and of the regional courts of appeal.
    With the panel’s unsupported ruling that the Supreme
    Court now places patent appeals within the exclusive
    jurisdiction of the regional circuits when the pleading
    alleges that the patent issue may lead to a non-patent law
    violation, we should consider this change en banc.


    As applied to the case at bar, it is not disputed that
    patent law is a “necessary element” of the antitrust claim,
    for without determination that a patent was obtained by
    fraud or inequitable conduct, there can be no antitrust
    violation. While “a claim supported by alternative theories
    in the complaint may not form the basis for § 1338(a)
    jurisdiction unless patent law is essential to each of those
    theories,” id. at 810, Xitronix alleged a theory of antitrust
    violation based solely on patent law. And, as Xitronix
    states, its purpose is to invalidate the patent or render it
    unenforceable. However, the panel rules that in Gunn v.
    Minton, 568 U.S. 251 (2013), the Supreme Court changed
    Federal Circuit jurisdiction such that only the regional
    circuits now have jurisdiction over Walker Process appeals.
    Gunn did not make the jurisdictional change ascribed
    to it. In Gunn the Court held that the appeal of a state
    law attorney malpractice case was properly in the state
    court, although the malpractice charge related to a patent
    issue. The Court observed that the patent had been
    invalidated ten years earlier, and described the patent
    aspect as “hypothetical” because whatever the attorney’s
    malfeasance, there could be no rights in this long-dead
    patent. Id. at 261 (“No matter how the state courts
    resolve that hypothetical ‘case within a case,’ it will not
    change the real-world result of the prior federal patent
    litigation. Minton’s patent will remain invalid.”).


    The panel’s ruling directly contradicts the court’s prior
    holdings. A contradictory ruling by the panel is improper,
    for “[t]his court has adopted the rule that prior
    decisions of a panel of the court are binding precedent on
    subsequent panels unless and until overturned in banc.”
    Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 765 (Fed.
    Cir. 1988). In the vast number of cases that have raised
    non-patent issues along with patent issues, no precedent
    of the Supreme Court or the Federal Circuit supports the
    panel’s ruling on the panel’s facts.


    Until today, there has been stability in the jurisdictional
    path of Walker Process appeals. No precedent
    deprives the Federal Circuit of jurisdiction of appeals that
    turn on issues of fraud or inequitable conduct in patent
    prosecution. These issues are not only substantial, but
    because they determine patent enforceability and validity,
    they are fundamental.

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  • Patently Bits and Bytes by Juvan Bonni

    Patently Bits and Bytes by Juvan Bonni

    Recent Headlines in the IP World:

    • Jonah Comstock: Apple Files Patent Application for Blood Pressure Monitoring Device (Source: Healthcare IT News)
    • Richard Lloyd: IP Index Showing Decline in the US Patent System Lacks Credibility, Claims Unified COO (Source: iam)
    • Rachel Siegel: Uber Wants a Patent to Tell if You Drink and Ride (Source: The Washington Post)
    • Susan Heavey, Mohammad Zargham, and Tim Ahmann: U.S. ITC Says Probing Toyota, Others in Patent Infringement Case (Source: Reuters)
    • Mary Wisniewski: USAA Sues Wells Fargo Over Remote-Deposit Patents (Source: American Banker)

    Commentary and Journal Articles:

    • Attorney Charles R. Macedo and Chandler Sturm: Rethinking Article III Standing in IPR Appeals at the Federal Circuit (Source: Patent Quality Initiative)
    • Dr. Dariush Adli: Do Amazon’s Movement-Tracking Wristbands Violate Workers’ Privacy Rights? (Source: Entrepreneur) 
    • Professor Adam Mossoff and Professor Eric R. Claeys: Patent Injunctions, Economics, and Rights (Source: SSRN)
    • Professor Tsai-fang Chen: Judicially Developed Patent Law and Expropriation Under Investor-State Dispute Settlement (Source: SSRN)

    New Job Postings on Patently-O:

    • Guntin & Gust
    • Harrity & Harrity



    Continue reading Patently Bits and Bytes by Juvan Bonni at Patently-O.

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  • Yelderman on Proximate and Geographic Limitations on Patent Damages

    StephenYelderman has posted a paper on ssrn titled Proximate v. Geographic Limits on Patent Damages, 7 IP Theory (2018)  Here is a link, and here is the abstract:
    The exclusive rights of a U.S. patent are limited in two important ways. First, a patent has a technical scope—only the products and methods set out in the patent’s claims may constitute infringement. Second, a patent has a geographic scope—making, using, or selling the products or methods described in the patent’s claims will only constitute infringement if that activity takes place in the United States. These boundaries are foundational features of the patent system: there can be no liability for U.S. patent infringement without an act that falls within both the technical and geographic scope of the patent.

    Once liability has been established and a court’s attention turns to remedies, the continued relevance of these boundaries is not so clear. If all the infringing activity and all the resulting harm are within the technical and geographic scope of the patent, there is no problem. But, sometimes, activities within the technical and geographic scope of a patent cause harm to the patentee somewhere outside that scope. For example, a defendant’s infringing sales of a patented product may cause the patent holder to lose some sales of an unpatented product too. Or, as another example, a defendant’s infringing activity in the United States might cause a patent holder to lose sales somewhere else. Are these harms—to sales of a different product, or in a different country—cognizable for purposes of measuring the patent holder’s damages? Or do the basic limits on patent scope apply to questions of remedy just as they do to questions of liability?

    This Essay argues that the same approach adopted at the edge of technical scope should apply at the geographic boundary as well. Specifically, patent holders should recover for the injuries actually and proximately caused by domestic acts of infringement, even if those injuries arise outside the technical or geographic scope of the patent. The Federal Circuit has correctly decided cases in which damages fall across the line of technical scope, but erred when it comes to damages that happen to cross a geographic boundary.

    This short essay (12 pages) is definitively worth a read.  The analysis is reminiscent of the arguments Professor Yelderman made in his WesternGeco amicus brief, which I found persuasive (see discussion here).

    Perhaps we’ll be hearing from the Supreme Court on WesternGeco next week . . .

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