Weekly IP Takeaways

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

1. “The Bear is charging” is a familiar expression to long-time golf fans to indicate that golf legend Jack Nicklaus was making his way up a leaderboard in a PGA tournament. Last week, the Bear, Jack Nicklaus, began charging by filing trademark infringement, unfair competition, and right of publicity a lawsuit against a Florida company that he allegedly once gave permission to use video and photographs of his swing in promotion of the company’s golf swing training aid. The allegations are that he was willing to allow such use while a certain person was involved with the company, but that once such person was no longer involved with the company, such permission was revoked. After a 2016 cease and desist letter from Nicklaus to the company did not produce the desired results, and after what appears to be some further discussions, Nicklaus filed suit. Two issues/takeaways: (1) there could be a statute of limitations and/or laches issue here because of the time between sending the cease and desist letter and filing suit, so do not wait this long to file suit; and (2) try to avoid oral contracts because the exact terms will be subject to dispute and increase litigation costs regarding their proof. One additional comment – while it may be desirable to use a famous person in one’s promotional materials, if he or she asked you to stop, it would probably be advisable to do so absent clear evidence that it is permissible to continue.

2. As previously referenced in my November 5, 2019 Takeaways (Takeaway No. 2), the Federal Circuit Court of Appeals affirmed, and expanded upon, District of Delaware Judge Leonard P. Stark’s overturning of a $2.54 Billion (yes, billion) jury verdict in favor of a Merck subsidiary because a patent directed to Hepatitis C medications were invalid for lack of written description and lack of enablement under 35 U.S.C. Section 112. Merck’s subsidiary, Idenix, has now asked the Federal Circuit to reconsider its decision asserting that the decision “threatens disaster for innovation” and “imposes more than a chilling effect on genus claiming” (a common patent claiming strategy for pharmaceutical inventions). It is not unusual for pharmaceutical patent applications to claim numerous species of a genus even if not all of the species have been described in detail for purposes of 35 U.S.C. Section 112, with the claims directed to the genus. It will be interesting to see if the Federal Circuit will reconsider its prior 2-1 panel opinion, as it may have substantial implications for patent claiming in pharmaceutical patent applications.

3. Continuing on the theme of jury verdicts in patent cases being overturned, a recent decision out of the Northern District of Texas overturned a jury verdict against Nintendo in connection with its Wii technology. A jury found that Nintendo infringed the asserted patent, that the patent was valid, and assessed a damages award against Nintendo of over $10 million. Nintendo filed a motion for judgment as a matter of law asserting that the patent was invalid under Section 101/Alice. Chief Judge Lynn of the Northern District of Texas agreed with Nintendo, found that the patent was directed to an abstract idea and failed to claim any inventive features or specific rules for accomplishing the process identified in the claims, and thus, invalidated the patent. A Federal Circuit appeal is almost assured to follow. Clearly, Section 101/Alice invalidity is alive and well, and the takeaway is to set forth details of any technological improvements or rules for the identified process both in the specification and the claims.