Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. Converse v. ITC – Important case from the United States Court of Appeals for the Federal Circuit (CAFC) for product design trade dress analysis. The opinion is here – http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2497.Opinion.10-30-2018.pdf.

a. The time for determining the existence of secondary meaning is when the infringement begins (and any survey evidence needs to attempt to test for this time point). If the product design trade dress is registered, the presumption of validity in terms of secondary meaning only exists from the time of registration forward.

b. The CAFC articulated a re-worked test for establishing secondary meaning that appears to have taken into account law from a number of circuit courts. Included in the re-worked test is that the five (5) years before the date infringement begins is the most important for establishing secondary meaning. While CAFC law, by and large, is not binding outside of the ITC, Trademark Office, and TTAB, this re-worked test will be important in the ITC, Trademark Office, and TTAB, and could be persuasive in other contexts.

c. In the context of similarity of trade dress in the likelihood of confusion analysis, the CAFC appeared to at least analogize the test for design patent infringement with the test for similarity of the marks in the likelihood of confusion analysis. This has frustrated one significant design patent commentator – see here (https://patentlyo.com/patent/2018/10/conflating-trademark-onfringement.html).

2. CAFC in Spineology v. Wright Medical affirmed the denial of a fee motion under 35 U.S.C. § 285. Fee motion was based on several assertions, including: (1) unreasonable claim construction, (2) unreasonable damages position, and (3) litigation misconduct. CAFC held that a rejected, but non-meritless claim construction was not grounds for fees, particularly where the district court did not adopt the fee movant’s construction, either. Regarding damages, the case was mooted by summary judgment and damages were not considered. The district court was not required to vet the damages issue as part of the fee motion. And, litigation misconduct was something within the purview of the district court and the abuse of discretion standard weighed heavily. The opinion is here – http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1276.Opinion.12-14-2018.pdf.

3. Section 285 fee award in patent case denied in part because of block billing, and reduced in part because of excessive hourly rates. This reaffirms the importance of avoiding block billing. The opinion is here – https://scholar.google.com/scholar_case?case=13685098906547277309&q=sap+investpic&hl=en&as_sdt=4,368&as_ylo=2018.

4. Very good, but somewhat one-sided, review of SCOTUS decisions in patent cases in last 35 years or so. http://www.ipwatchdog.com/2018/12/12/congress-rebuffs-scotus-dominance-patent-law/id=103947/.