Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. The CARES Act touches on many aspects of our economy and lives, and intellectual property is no exception. The United States Patent and Trademark Office (USPTO) issued a press release announcing extensions of time to various patent- and trademark-related deadlines pursuant to the emergency authority provided to it under the CARES Act. One key deadline that was NOT extended was the deadline to convert a provisional patent application to a non-provisional or PCT application.
2. The District of Delaware issued a ruling on post-trial motions in what was primarily a design patent and trade dress infringement case related to certain ballet flats made by Plaintiff. At trial, a jury found that four (4) design patents were willfully infringed and not invalid, and that the alleged trade dress was also willfully infringed. A damages award of nearly $3 million was also made by the jury. Both parties filed post-trial motions – the plaintiff for a permanent injunction, attorneys’ fees, enhanced damages, and interest on the damages award; the defendant for judgment as a matter of law and/or a new trial that there was no infringement, and the design patents were invalid for lack of ornamental features or based on prior art. The Court denied the defendant’s motion finding that substantial evidence supported the jury verdict and/or the grounds for the motion were waived. The Court granted portions of the plaintiff’s motion, including that the case was exceptional and for a partial fee award. The case was found to be exceptional because it was unreasonably litigated, in part – discovery deficiencies, late disclosures, surprises and late arguments presented at trial, and baseless counterclaims. Of note is that the Court cited a Federal Circuit opinion that involved the author and our firm.
3. The Fourth Circuit Court of Appeals recently issued an opinion finding that registered product design trade dress was invalid because the configuration trade dress was directed to functional, utilitarian features that had previously been the subject of a now-expired utility patent. Of course, product design trade dress must be non-functional in order to be protectable, and one typically negative fact in that regard is when the design sought to be covered by trade dress was (or is) the subject of utility patent protection. One wonders how the plaintiff was able to register this trade dress in the first place. The takeaway here is to be careful about asserting trade dress in the same configuration that was previously the subject of a utility patent.
