Weekly IP Takeaways

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

1. Several months ago, I posted (Takeaway No. 1) what was a somewhat alarming comment by the Federal Circuit regarding the doctrine of equivalents – “The doctrine of equivalents applies only in exceptional cases and is not simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims” – from the Amgen v. Sandoz opinion on May 8, 2019. In a non-precedential order on the petition for panel rehearing, the Federal Circuit has removed has removed “applies only in exceptional cases” from the quote above, so that it now reads, “The doctrine of equivalents is not simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims.” This revision to the opinion is a definite “walk back” from the more extreme language in the original opinion. While the doctrine of equivalents may not always apply, it is still available under appropriate circumstances, not only exceptional ones.

2. In a recent case out of the Northern District of California, Kiva Health Brands v. Kiva Brands (Case No. 19-cv-03459-CRB), the Court dismissed several counterclaims asserting prior common law use of a trademark as a defense to a trademark infringement claim. The catch in this case was that the Defendant-Counterclaimant’s prior use was in the cannabis space, and was not legal under federal law. The Court determined that the asserted prior use was not lawful and could not support a defense against a trademark infringement claim. The Court stated, “[t]o hold that KBI’s prior use of the KIVA mark on a product that is illegal under federal law is a legitimate defense to KHB’s federal trademark would ‘put the government in the anomalous position of extending the benefits of trademark protection to a seller based upon actions the seller took in violation of that government’s own laws.’” The Court further stated that, “the illegality of KBI’s products under federal law renders KBI unable to challenge KHB’s federal trademark.” Thus, common law usage of a cannabis mark in a state where cannabis is legal does not create a prior use for defending against enforcement of a similar federal trademark.

3. In a recent decision regarding a patent that used wireless technology to convey the status of the position of a garage door, the Federal Circuit invalidated several claims that supported a substantial damages award, and remanded the case for a re-calculation of damages, and possibly attorneys’ fees as well. The Federal Circuit (at least this panel) appears to remain content with pulling Section 102 (anticipation) and 103 (obviousness) considerations into Section 101 (subject matter eligibility), as well as using a case comparison approach in its Section 101 analyses (i.e., comparing the case at hand to prior decisions on Section 101). In this case, because there was no particularized description of how the status of the garage door was wirelessly communicated, the Court likely reached the correct result in not finding an inventive concept. The Court stated on page 10 of the Slip Opinion, “the specification makes clear that transmitting information wirelessly was conventional at the time the patent was filed and could be performed with off-the-shelf technology.” The takeaway here is that there needs to be details of how the invention works, and how the invention is, for lack of a better word, “inventive,” in order to survive certain types of 101 challenges.