Weekly IP Takeaways

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

1. Following up on a recent post (Takeaway No. 1), the Cleveland Major League Baseball team, which will soon rebrand from the “Indians” to the “Guardians,” settled a trademark lawsuit filed against it by the Cleveland Guardians roller derby club. The details of the agreement appear scarce, but it appears that both teams may continue to use the “Guardians” name. The takeaway here is that this dust-up probably could have been avoided, but sometimes a lawsuit helps get parties “to the table.”

2. In a recent decision from the District of Delaware, which followed from objections by both parties to the Report and Recommendation of Magistrate Judge Hall, District Judge Andrews adopted the Report and Recommendation on whether this patent case should be deemed exceptional for purposes of a fee award under 35 U.S.C. 285. The case was found exceptional against Plaintiff in that the Court found that, based on a disclaimer of claim scope during prosecution, Plaintiff had access to information demonstrating non-infringement prior to filing suit. The Defendants, however, sought attorneys’ fees for the inter partes review proceeding they filed, but were refused in the Report and Recommendation, and their objections overruled by Judge Andrews on this point. The Defendants also sought to have Plaintiff’s counsel held jointly and severally liable for the fee award, but that request was rejected as well. The takeaway here is to make sure to do a solid pre-filing investigation before filing an infringement case. As to recovering fees from an associated inter partes review, it appears some courts may be open to such a request, but Judge Andrews in Delaware does not appear to be so inclined.

3. In another recent decision from the District of Delaware, claims in two patents directed to isolated nicotinamide riboside, a component of cow’s milk, were found to be invalid under Section 101/Alice. At first blush, this seems to be a startling outcome, but it may not be. The compound and its benefits were known. Methods of isolating it were known. The patent owner had formulated it as a potential anti-aging supplement and obtained patents. The problem for the patent owner in responding to the Section 101/Alice challenge was that the touted features of the formulation were not detailed in the claims or specification. Thus, the Court found the compound to be naturally occurring, and there was nothing else inventive or distinguishing about the way the compound was presented in the patents so as to overcome the Section 101/Alice challenge. The takeaway here is that merely isolating naturally occurring compounds is not enough for patenting, nor is formulating the naturally occurring compounds likely enough for patenting, unless one describes the novel details of the formulation and how those details enhance the functioning of the compound.