• Ninth Circuit Vacates and Remands ‘Stairway to Heaven’ Copyright Case Over Erroneous and Prejudicial Jury Instructions

    The Court of Appeals for the Ninth Circuit recently issued an opinion in Skidmore v. Led Zeppelin, which vacated-in-part a judgment out of the Central District of California that Led Zeppelin’s hit classic rock song “Stairway to Heaven” was not substantially similar to “Taurus,” a song written by the late songwriter Randy Wolfe, a member of the band Spirit. The case was remanded back to the district court after the appellate court found that certain instructions given by the district court to…

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  • NAI loses appeal of IPR decision at the CAFC; 120 and chain of priority issues

    Woodbolt Distributors, LLC (“Woodbolt”) requested
    that the United States Patent and Trademark Office
    (“PTO”) reexamine U.S. Patent No. 8,067,381 (“the ʼ381
    patent”) owned by Natural Alternatives International,
    Inc. (“NAI”). The PTO ordered inter partes reexamination,
    and the examiner rejected the challenged claims as
    anticipated by or obvious over cited prior art, including a
    parent of the reexamined patent. NAI appeals the Patent
    Trial and Appeal Board’s (“Board”) final determination
    affirming the examiner’s rejections and its subsequent
    denial of NAI’s request for rehearing. Woodbolt is not a
    party to this appeal. The Director of the PTO has intervened
    to defend the Board’s decision. We have jurisdiction
    pursuant to 28 U.S.C. § 1295(a)(4)(A). We affirm.

    Of the history

    District court litigation involving the ʼ381 patent
    commenced between NAI and Woodbolt in December
    2011.2 In May 2012, during that proceeding, Woodbolt
    sought inter partes reexamination of the asserted patent
    claims.3 The request alleged that “the asserted claim to
    priority of the ʼ381 Patent is defective” because the “applicants
    deliberately and expressly terminated their claim
    to the priority of the first four applications[,]” which thus
    “broke[] the chain of priority between the Fourth and
    Fifth Applications.” J.A. 45–46. During reexamination,
    NAI did not dispute that it had waived priority to the
    fourth through the first applications in its fifth application.
    J.A. 971. But it insisted that the sixth application
    maintained priority back to the first application because
    NAI did not amend the “Cross Reference of Related Applications”
    in the sixth application. According to NAI, it was
    irrelevant what happened to the fifth application once the
    sixth application became entitled to the first application’s
    filing date. J.A. 975. Unpersuaded, the examiner finally
    rejected the reexamined claims in view of prior art including
    the ʼ596 patent (i.e., the patent that issued from the
    first application), and then closed prosecution.4 J.A. 1210,

    NAI appealed the examiner’s decision to the Board.
    The Board determined that when NAI filed the eighth
    application, “[t]he fifth application [was] not entitled to
    the benefit of the fourth application since the specific
    reference to the fourth application was deleted in the
    fifth.” J.A. 13. Because the eighth application claimed
    priority to the first application via the fifth application,
    the Board determined that the eighth application (and
    thus the ʼ381 patent) was also not entitled to the benefit
    of the fourth through the first applications. See J.A. 16.
    The Board issued a final written determination affirming
    the examiner’s rejections and denied NAI’s request for


    The Board determined that
    when filed, the eighth application did not meet the “specific
    reference” requirement of § 120 as to the filing date
    of the first application. J.A. 11–12. That was so, according
    to the Board, because the eighth application claimed
    the benefit of the first application’s filing date by way of
    the fifth application, and NAI had amended the fifth
    application to claim priority to only the 2003 provisional
    application. See id. In other words, because the fifth
    application lacked priority to the first application, the
    eighth application’s priority claim to the first application
    (via the fifth application) did not satisfy all of § 120’s
    requirements. The Board, therefore, did not err in determining
    that the ʼ381 patent was not entitled to claim the
    benefit of the filing date of the first application under
    § 120, as the priority claim in the ʼ381 patent was defective
    from the start.

    The MPEP arises:

    As an initial matter, we note that the MPEP “does not
    have the force of law[,]” Molins PLC v. Textron, Inc., 48
    F.3d 1172, 1180 n.10 (Fed. Cir. 1995), and does not bind
    us, Litton Sys., 728 F.2d at 1439. Nonetheless, we have
    reviewed MPEP § 201.11 and find that nothing in its text
    limits the scope of waiver to only the instant application.
    Indeed, § 201.11 does not contemplate all possible consequences
    of waiving a benefit claim in a particular application.
    Moreover, at least in the context of terminal
    disclaimers, the MPEP has explicitly indicated when a
    disclaimer applies only to the instant application and not
    to downstream applications. See, e.g., Hagenbuch v.
    Sonrai Sys., 2015 U.S. Dist. LEXIS 39083, *10–13 (N.D.
    Ill. Mar. 27, 2015) (explaining that “[t]he MPEP in effect
    in 1993 described the effect of a disclaimer that, by its
    terms, applied only to the ‘instant application’”); see also
    MPEP § 1490(VI)(B) (9th ed., Rev. 8) (2017) (“A terminal
    disclaimer filed to obviate a nonstatutory double patenting
    rejection is effective only with respect to the application
    or patent identified in the disclaimer unless by its
    terms it extends to continuing applications . . . .”).

    A Civil War era patent case is cited:

    NAI, however, neither explains why § 120 compels
    this interpretation of priority claims nor provides any case
    law to support its conclusion. Nor does NAI provide any
    argument to undermine the long-standing interpretation
    of priority as a single chain, growing with each additional
    continuation. The Supreme Court has previously explained
    that under § 120, parent and continuing applications
    “are to be considered as parts of the same
    transaction, and both as constituting one continuous
    application, within the meaning of the law.” Godfrey v.
    Eames, 68 U.S. 317, 326 (1863); see also Sticker Indus.,
    405 F.2d at 93 (stating that “each application in a long
    chain grows out of the one immediately preceding it”). We
    therefore decline to adopt NAI’s interpretation of chain of

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  • Frito-Lay prevails in crispbread slices trademark dispute

    In Real Foods v. Frito-Lay, appellant Real Foods lost, cross-appellant Frito-Lay won, although not
    for the reasons argued by Frito-Lay.

    The general issue:

    Appellant Real Foods Pty Ltd. (“Real Foods”) [represented by Norris, McLaughlin & Marcus]
    sought registration of two marks: “CORN THINS,” for “crispbread
    slices predominantly of corn, namely popped corn
    cakes”; and “RICE THINS,” for “crispbread slices primarily
    made of rice, namely rice cakes.” J.A. 279 (emphasis
    omitted). Cross-Appellant Frito-Lay North America, Inc.
    (“Frito-Lay”) opposed the registrations, arguing that the
    proposed marks should be refused as either generic or
    descriptive without having acquired distinctiveness.

    Frito-Lay won its cross-appeal, but not for the reasons it argued:

    Specifically, Frito-Lay contends the TTAB erred by
    finding “‘thins’ is not a generic term” “based solely on the
    fact that it is used within some third-party brand names”
    because “‘thins’ is commonly used as a generic term for
    snack food products, including crackers and crispbread
    slices.” Id. at 22. We agree that the TTAB erred, but not
    for the reasons asserted by Frito-Lay.

    “[A] term can be generic for a genus of goods or services
    if the relevant public understands the term to refer
    to a key aspect of that genus.” Royal Crown, 892 F.3d at
    1367 (ellipsis, internal quotation marks, and citation
    omitted). Genericness involves a “two-step inquiry” that
    asks: (1) “what is the genus of goods or services at issue,”
    and (2) “is the term sought to be registered or retained on
    the register understood by the relevant public primarily
    to refer to that genus of goods or services?” Princeton
    Vanguard, 786 F.3d at 965 (internal quotation marks and
    citation omitted); see id. at 968 (explaining that the TTAB
    should consider “the record evidence of the public’s understanding
    of the mark as a whole”). “The authority is
    legion that the question of registrability of an applicant’s
    mark must be decided on the basis of the identification of
    goods set forth in the application[,] regardless of what the
    record may reveal as to the particular nature of an applicant’s
    goods . . . .” In re Cordua, 823 F.3d at 602 (internal
    quotation marks and citation omitted).

    The TTAB improperly narrowed the genus of the
    goods at issue.

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  • Olivia de Havilland takes her "truth in docudrama" case to the U.S. Supreme Court

    Back in 2007, IPBiz discussed California’s anti-SLAPP law in the context of the Cha/Flamm plagiarism matter.
    See Judge to hear anti-SLAPP arguments in Cha/Flamm matter on Nov. 20 .

    Anti-Slapp issues arose in the context of actress Olivia de Havilland’s fight against her false depiction in a docudrama.

    In March 2018, the New York Times discussed an anti-SLAPP issue in the de Havilland/FX matter:

    FX tried to have the lawsuit tossed last summer, on the grounds of California’s anti-Slapp (Strategic Lawsuit Against Public Participation) statute, designed to quickly set aside lawsuits that may be designed to chill free speech. But a trial judge surprised legal observers by ruling that Ms. de Havilland had sufficient grounds to proceed with her lawsuit.

    Although de Havilland won on the anti-SLAPP issue, she lost at the California appellate level.

    As to the core of the unsuccessful argument by de Havilland, the California appellate court noted:

    “Books, films, plays and television shows often portray real people,” the court decision reads. “Some are famous and some are just ordinary folks. Whether a person portrayed in one of these expressive works is a world-renowned film star — ‘a living legend’ — or a person no one knows, she or he does not own history.”

    See FX Prevails in ‘Feud’ Defamation Suit Filed by Olivia de Havilland

    One would assume de Havilland would point out that a false statement is not history.

    Now, in October 2018, de Havilland is taking her fight to the US Supreme Court

    “We must persevere and speak truth to power,” the 102-year-old two-time Oscar winner said Friday as her attorneys petitioned SCOTUS in the ongoing legal battle. “The fight is itself important to the principle of honesty, so much in need today in the face of deliberate public confusion for selfish agendas,” she added in a statement from her Paris home

    Having suffered a number of legal setbacks and defeats since filing her lawsuit in June 2017, — including the California Supreme Court’s decision in July not to review her case — de Havilland is seeking to have the nation’s highest court re-examine what jurisdictions in the Golden State have decided.

    See Olivia De Havilland Takes ‘Feud’ Feud With FX & Ryan Murphy To Supreme Court

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  • Gamestatix Develops a Blockchain Platform to Correct Inequalities in Booming Gaming Market

    Gamestatix intends to release an ERC-20 token that can be deployed on an Ethereum blockchain. Launched in 2014, this technology makes it possible for Gamestatix to pay in a cryptocurrency that could then be transferred more readily than Bitcoin. The difference between the two is that Bitcoin is only a currency while Ethereum is an application platform through which companies can build new programs. Both use blockchaining technology, but Ethereum’s allows for complex applications in a “smart…

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  • Downturn in visiting judges at the Federal Circuit

    It is interesting to note that there has been a significant downturn in the number of visiting judges at the Federal Circuit since Chief Judge Michel retired.  My sense is that even more so than the “Rader” court, the “Prost” court has had fewer visiting judges than the “Michel” court.  During the visit to Chicago […]

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