Irwin IP Case Of The Week

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

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Arizona Mandates SaaS Providers Implement API

The United States District Court for the District of Arizona recently denied a motion for a preliminary injunction seeking to avoid compliance with an Arizona law requiring software providers to implement an application programming interface.  The Court found the law was not preempted by the Copyright Act and did not

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A Splintered Opinion at the Corner of Joinder and State Immunity

On July 24, 2020, in a splintered three-opinion decision,[1] the Federal Circuit held that due to Eleventh Amendment sovereign immunity, the University of Texas (“UT”) could not be involuntarily joined by its licensee, Gensetix, as a plaintiff to a patent infringement lawsuit.  Despite prior case law finding that a patent

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An Invalidity Challenge is not a Changed Condition: Federal Circuit Affirms Exclusion Order Rescission Petition Denial

The International Trade Commission (“ITC”) issued an exclusion order prohibiting the importation of products infringing a patent that teaches a self-anchoring beverage container, used to prevent spills. Mayborn was not included in the original complaint to the ITC, and none of the defaulting respondents raised invalidity challenges. Mayborn appealed the

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Inter Partes Means Inter Partes

On July 6, the PTO’s Precedential Opinion Panel (“POP”) held that when examining proposed amended claims in AIA trials, PTAB panels may raise grounds for rejection sua sponte, but should do so only in rare circumstances and with adequate notice.  In this, the fourth opinion issued by the POP, a

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BOOKING.COM – Generic. no. Trademark. yeah.

Last week, the Supreme Court held that the combination of a generic word and “.com” is not necessarily generic and may be eligible for federal trademark registration.  A trademark allows consumers to distinguish the goods or services of one manufacturer from another’s and permits a trademark owner to protect its

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Instagram Artists Rejoice? Not Quite. Judge Reconsiders Prior Ruling, But Instagram Maintains Its Foothold On Rights

Plaintiff Stephanie Sinclair brought suit against Defendant Mashable and its parent company, alleging copyright infringement when Mashable posted Sinclair’s photograph on its website without Sinclair’s authorization.  The Court originally granted Defendants’ Motion to Dismiss, finding that the Defendants had a valid sublicense from Instagram to post the photograph. However, on

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Is Skin a Tangible Medium? The Second Circuit Won’t Touch

In a summary order, the Court of Appeals for the Second Circuit recently side-stepped a difficult question currently facing copyright law: whether the human body is a sufficiently tangible medium of expression to warrant copyright protection.   Plaintiff Sammy Mourabit (“Mourabit”), a makeup artist, provided makeup services for a 2013

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