Irwin IP Case Of The Week

Where’s ANDA?: A New Frontier for Hatch-Waxman Litigation

Changing the future of Hatch-Waxman litigation, the Federal Circuit held as a matter of first impression that for purposes of venue under Hatch-Waxman Act claims, acts of infringement occur where actions related to the Abbreviated New Drug Application (ANDA) submission occur. Thus, a plaintiff has only two options to file

TTAB Catches Mayweather Looking

Floyd Mayweather, the infamously elusive twelve-time world champion boxer, caught a stiff jab from the Trademark Trial and Appeal Board (“Board” or “TTAB”)’s rejection of his “PAST PRESENT FUTURE” (“the Mark”) on grounds that it could not function as a source identifier.  The Board found that the Mark failed to

A [Still] Splintered Opinion at the Corner of Joinder and State Immunity

Despite the splintered, three-opinion decision issued by a Federal Circuit panel in July,[1] the Federal Circuit, on October 20, denied Baylor College of Medicine’s petition for rehearing, either by the panel or en banc.  In the original decision, the Federal Circuit held that due to Eleventh Amendment sovereign immunity, the

Gorilla Glue Back in a Sticky Trade Dress Situation

On October 20, 2020, the Eleventh Circuit resuscitated J-B Weld’s (“J-B”) action for trade dress infringement and trade dress dilution against Gorilla Glue (“Gorilla”) by reversing the lower court’s grant of Gorilla Glue’s motion for summary judgment.  The Court found that the lower court failed to discuss all of the

Celebrity Photos, Social Media, Standing, and a Strip Club

State and federal claims brought by various models for unauthorized use of their images in advertisements by a strip club received mixed results on cross motions for summary judgment in the District of Arizona.  Plaintiffs prevailed on their state law misappropriation claim, but their state law false light claims were

Patent Rocket Docket: Let’s move things along

Since Judge Alan Albright took the bench in the Western District of Texas in 2018, the former patent litigator’s extensive experience, as well as the rise of Austin as a tech hub, has driven patent infringement filings to that District, with 618 new patent infringement filings this year through September

The Internet Short-Circuits the Narrative

On September 1, 2020, the Northern District of Illinois held microphone manufacturer Shure in contempt for selling a beam-forming microphone that was no more than colorably different than the prior Shure product preliminarily enjoined for patent infringement in 2019.  Shure argued that its redesign was non-infringing.  But ClearOne relied on

Seeking to Re-Add Inventor After Request to Remove Justified

The Federal Circuit vacated the decision of a district court declaring a patent invalid for failure to name all inventors. The Court held the patentee’s former request to remove the inventor and subsequent attempt to add that inventor back to the patent were justified and did not trigger judicial estoppel. 

An agreement to agree doth not a contract make

Although Phytelligence. Inc. (“Phytell”) and Washington State University (“WSU”) entered into a Propagation Agreement (“the Agreement”) for Phytell to grow WSU’s patented “WA 38” apple trees for research, the Court of Appeals for the Federal Circuit affirmed that the Agreement lacked the language and context permitting Phytell to option commercialization

Filing Down the Bars Against the Doctrine of Equivalents

On August 3, 2020, the Federal Circuit affirmed a determination that 10X Genomics had willfully infringed a patent owned by the University of Chicago and assigned to Bio-Rad Laboratories covering microfluidic test chip technology, rejecting 10X’s contentions that the plaintiffs’ doctrine of equivalents theory was barred by prosecution history estoppel