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Irwin IP Case Of The Week

Dilution by Blurring: Potify Application Goes Up in Smoke

The Trademark Trial and Appeal Board (TTAB) issued the first precedential opinion of 2022 refusing registration of POTIFY and POTIFY (design) based on dilution by blurring of the mark SPOTIFY.  The TTAB did not reach the alternate grounds of likelihood of confusion or dilution by tarnishment. Applicant sought registration in

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The Divide Continues: The Written Description Requirement Revisited

On January 3, 2022, the Court of Appeals of the Federal Circuit (“CAFC”) affirmed a Delaware ruling finding that a patent on a multibillion-dollar multiple sclerosis drug was not invalid and did have an adequate written description as to no-loading-dose and 0.5 mg daily dosage limitations despite the fact that

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CAFC Allows More “Standing” Room In Article III Cases

The Federal Circuit (“CAFC”) continues to define when a party has standing to appeal the final written decision of an inter partes review (“IPR”) proceeding from the Patent Trial and Appeal Board (“PTAB”).  On December 28, 2021, the CAFC ruled in a pair of precedential decisions (Nos. 2020-1664 and 2020-1828)

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Artwork Based On Iconic Photo Is Not Fair Use

Recently, the Second Circuit held that it was not fair use for an artist (“Andy Warhol”), who was licensed to create an artist reference for a 1984 Vanity Fair article based on an iconic photograph of Prince, to also create a 15-work series based on the iconic photograph.  Andy Warhol

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CAFC Balances the Patent Infringement Pleading Burden

Recently, the Court of Appeals for the Federal Circuit (“CAFC”) took the rare opportunity to describe the pleading requirement as it relates to direct patent infringement.  Plaintiff Bot M8 LLC (“Bot M8”) sued Sony Corp. of America (“Sony”) alleging that Sony’s products, including its Playstation 4 videogame console (the “PS4”),

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Section 101: Unconventional Arrangements

In a 363-page final initial determination of a Section 337 of the Tariff Act of 1930, as amended (19 U.S.C. § 1337), action, publicly released on October 13, 2021, Administrative Law Judge (“ALJ”) David P. Shaw addressed a number of arguments with respect to several patents owned by Overhead Door

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Alice Still Decimating “Groundbreaking” Developments

The Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank International continues to trip up patentees, as the Federal Circuit, (“CAFC”), and the District of Arizona invalidated two separate patents for claiming unpatentable subject matter last week.  Cardionet involved U.S. Patent No. 7,099,715 (“the ’715 patent”), which was generally

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Fractured Foundation → Fees

The Federal Circuit (“CAFC”) affirmed an award of exceptional case attorneys’ fees under 35 U.S.C. § 285 (“§ 285”) over Appellant Heat On-The-Fly (“HOTF”)’s arguments that the district court erred in failing to consider certain factual findings, and that it mis-weighed the strength of HOTF’s litigation positions and a purported lack of

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PTAB Still Constitutional, But A Weakness Emerges

On October 13, 2021, the Federal Circuit (“CAFC”) held that any financial interest administrative patent judges (“APJs”) have in instituting AIA proceedings did not violate a patentee’s due process rights.  Mobility Workx (“Mobility”) brought an infringement suit against T-Mobile and Verizon Wireless, shortly afterwards Unified Patents LLC (“Unified”) filed an

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