Excellence. Integrity. Success.

Irwin IP Case Of The Week

Unreasonable Delay In Prosecuting Patent Costs Patentee $308 Million

The Court of Appeals for the Federal Circuit (“CAFC”) recently affirmed an Eastern District of Texas ruling that U.S. Patent No. 8,191,091 (“the ’091 patent”) is unenforceable due to prosecution latches. Personalized Media Communications, LLC (“PMC”) was found to have engaged in an unreasonable and unexplained delay in prosecuting its

Read More

Check Trademark Application ID Categories Twice, File Once

On January 12, 2023, the Trademark Trial and Appeal Board (“TTAB”) redesignated a decision as precedential, in which it denied a trademark based on nonuse because the Applicant applied using the TEAS Plus application under the category of “musical instruments,” but sought to expand this identification category to “musical accessories”

Read More

RICO Requires Transfer of Title to Forfeit Trademarks

The Ninth Circuit recently affirmed the denial of the United States’ second motion for preliminary order of forfeiture of the Mongol Nation’s trademarks.  The Ninth Circuit held that the Racketeer Influenced and Corrupt Organization Act (RICO) did not provide the government with the power to strip a group of their

Read More

Expert Methodology Critical in Denial of Preliminary Injunction

The United States District Court for the Northern District of Illinois recently denied a renewed motion for a preliminary injunction seeking to prohibit sales of Defendants’ hoverboards that allegedly infringed Plaintiffs’ design patents (exemplary comparison pictured below): The renewed motion came after the Court had previously issued a preliminary injunction,

Read More

Can You Sell a Patented Method?  Perhaps… But Not Today

On November 17, 2022, the District of Delaware adjudicated a perfect storm of international patent enforcement: a method claim infringement dispute between an Australian patent owner (F45) and the U.S. subsidiary (BFT) of another foreign company (BFT Australia) where some steps were performed in Australia, and others by BFT’s U.S.

Read More

Be Careful What You Admit to During Oral Argument

In a case informative about appellate practice, the Court of Appeals for the Federal Circuit (“CAFC”) overturned-in-part the Patent Office’s conclusions that a communication system was not obvious.  The CAFC found one claim obvious because a similar claim was found obvious, even though that argument had not been asserted by

Read More

Registering Trademarks Shows Secondary Meaning 

On November 9, 2022, the Federal Circuit (CAFC) affirmed a preliminary injunction in favor of SoClean, Inc. (“SoClean”) against Sunset Healthcare Solutions, Inc. (“Sunset”).  SoClean sued Sunset for trademark infringement of its registered mark for replacement filters.  Although the district believed that SoClean was likely to prevail on the merits,

Read More

Damages Retrial Awarded After CAFC Decision Issues Mid Trial

Following a nine-day jury trial, the district court granted the plaintiff’s request for a new trial on damages.  The basis for the grant of a new trial on damages was the Federal Circuit’s (CAFC) decision in Omega Patents, LLC v. CalAmp Corp., 13 F.4th 1361 (Fed. Cir. 2021).  The CAFC,

Read More

Defending Against Willfulness Without Waiving Privilege

In a patent dispute between Allergan and Sandoz, the District Court of Colorado granted Plaintiff’s motion in limine excluding certain evidence the Defendant sought to rely upon to defend against the Plaintiff’s claim of willful infringement because reliance on that evidence would require waiver of attorney-client privilege when the defendant

Read More