Weekly IP Takeaways

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

1. Famous and extremely tasty mall food vendor, Cinnabon, filed a lawsuit against a Nevada company in the cannabis industry that is marketing a Cinnabon-flavored CBD vape liquid. The lawsuit alleges trademark infringement, trademark dilution, and unfair competition claims, alleging that the vape company was never given permission to use Cinnabon’s name, and that it has ignored cease and desist letters. Interestingly, because Cinnabon’s goods and services are so much different than a vape company’s, the trademark infringement claims may not be a slam dunk. The trademark dilution and unfair competition claims will likely fare better. One would think that Cinnabon would not want to be associated with a vape company.

2. In December of 2016, a Delaware jury awarded Merck’s subsdiary, Idenix, a $2.54 billion damages award for infringement of a patent covering Hepatitis C drugs. This was the largest damages award in a patent case to date. In a post-trial motion, that damages award was overturned as Judge Leonard Stark found that the asserted patent was invalid for lack of enablement under 35 U.S.C. 112 because to arrive at the claimed invention would require undue experimentation. Idenix appealed Judge Stark’s ruling to the Federal Circuit, and to Idenix’s dismay, not only did the Federal Circuit affirm Judge Stark’s finding on enablement, but also found that the patent was invalid for lack of written description as well. The opinion is here. This is a good reminder to make sure that patent applications describe the claimed invention in sufficient detail to avoid invalidation for lack of written description or lack of enablement.

3. In a very interesting opinion from the Federal Circuit, the Court vacated and remanded a ruling of the Patent Trial and Appeals Board (PTAB) in which the three-judge PTAB panel found that the challenged patent was invalid for anticipation by prior art. The Federal Circuit did not overturn the finding of anticipation per se. Rather, the Federal Circuit determined that the process for appointing PTAB administrative law judges violated the Appointments clause of the Constitution. Basically, the Secretary of Commerce appoints PTAB judges, but because of a provision restricting the judges removal, they judges are deemed “principal officers” that needed to be appointed by the President with Senate approval. The Secretary of Commerce could appoint the judges if they are “inferior officers.” Even though the appellant did not raise the issue for appeal, the Federal Circuit indicated that this was a sufficiently important issue that the waiver argument was rejected. A possible solution may lie in amending the statute to remove the restrictions on removal of the judges, and then they could be subject to appointment by the Secretary of Commerce. Interestingly, the Federal Circuit is remanding the matter to a new PTAB panel for a fresh review of the issues. This is something that patent owners with their patents under current attack in inter partes review proceedings in the PTAB should consider raising for the time being.