Weekly IP Takeaways

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

1. The Federal Circuit Court of Appeals recently held that a patent directed to detecting a certain genetic mutation in Labrador retrievers is invalid under Section 101 because it merely detects a naturally existing gene mutation through conventional, molecular biological techniques. In support of its opinion, the panel stated that, “the Asserted Claims are not directed to a new and useful method for discovery because they begin and end with the point discovery of the HNPK mutation in the SUV39H2 gene.” In other words, the claims are not directed to any new, innovative way of detecting the naturally occurring genetic mutation. The opinion, which is here also addresses issues related to personal jurisdiction and subject matter jurisdiction, the latter of which involved a foreign sovereign immunity question because one of the defendants was a foreign university.

2. In another case out of the Federal Circuit, the Court affirmed the Central District of California (Guilford, J.) decision not to find a patent case “exceptional” and decline to award attorneys’ fees to the prevailing party. The opinion is here. In the case, the defendants pressed the argument that where the fees in a case exceed the likely damages in a case, the case should be deemed “exceptional” under 35 U.S.C. Section 285. The Federal Circuit noted that are other reasons to bring a patent case besides money (e.g., an injunction), and declined to create a per-se rule as pushed for the defendants. The Federal Circuit also stated that a weak damages case, in and of itself, is not grounds for finding a case exceptional. This case could have implications for trademark infringement cases, as well, inasmuch as both patent and trademark cases have an “exceptional” case standard for attorneys’ fees.

3. In a case out of the Eleventh Circuit Court of Appeals, Luxottica successfully persuaded a jury, and the appeals court, that a landlord of a space where sales of counterfeit merchandise are taking place can be held liable for contributory trademark infringement. The opinion is here. In this case, the landlord and/or its representatives that were leasing space to vendors of counterfeit products appeared to turn a blind eye to ongoing sale of counterfeit Ray-ban and Oakley sunglasses. There were several raids conducted, including one apparently after litigation was commenced, but the sales of counterfeit products continued. Thus, the requisite scienter for a contributory infringement claim was present, and the appeals court affirmed a jury verdict in favor of Luxottica against the landlords et al for contributory trademark infringement and damages therefor. This is similar to a case I recently reported on out of New York on similar facts – https://cisloandthomas.com/weekly-ip-takeaways-12/ (Takeaway No. 3).