Blogs

This blog is a compilation of all of the firm’s blogs. We operate three independent blogs, the ITC 337 Law Blog, the only legal blog devoted exclusively to intellectual property actions in the ITC, the Patents Post Grant Law Blog, focused on patent reexamination, reissue and the new post grant procedures introduced by the Leahy Smith America Invents Act, and the Protecting Designs Law Blog, to serve as a forum on matters involving the protection and enforcement of industrial design rights in the U.S. Other practice groups within the firm post entries on their areas of the law within this main blog.

Oblon Blog

May 18, 2015
TOYOTA PREVAILS IN TTAB PROCEEDING Toyota Motor Corporation and Toyota Motor Sales U.S.A., Inc. (“Toyota”) prevailed in their opposition before the Trademark Trial and Appeal Board (“TTAB”) against the mark PRIUS for various goods including chemical flavorings for the preparation of tobacco, cigarettes and electronic cigarettes. Toyota Jidosha Kabushiki Kaisha, t/a Toyota Motor Corporation and...
March 24, 2015
Today, the Supreme Court, in B&B Hardware v. Hargis Industries, held that if the likelihood of confusion issues decided by the Trademark Trial and Appeal Board in a registrability proceeding are materially the same as those decided in a subsequent infringement action in federal district court, the rules of collateral estoppel will preclude re-litigation of those issues in the district court...
March 16, 2015
New & Improved Basis for Refusal to Register Single Work Titles  A single title of a work should now be registrable on the Supplemental Register provided the title is in use in commerce. In a recent Trademark Trial and Appeal Board (TTAB) case, the refusal based on the failure to function as a mark was questioned and hopefully laid to rest. Although not identified as a precedent, In re...

ITC 337 Law Blog

May 19, 2015
On May 18, 2015, the U.S. International Trade Commission ("Commission") issued a press release announcing their vote to institute an investigation of Certain Recombinant Factor VIII Products (Inv. No. 337-TA-956).The investigation is based on an April 16, 2015 complaint filed by Baxter International Inc. of Deerfield, Illinois, Baxter Healthcare Corp. of Deerfield, Illinois, and Baxter Healthcare...
May 18, 2015
On May 1, 2015, the International Trade Commission ("the Commission") issued the public version of its opinion in Certain Soft-Edged Trampolines and Components Thereof (Inv. No. 337-TA-908) affirming ALJ Pender's Final Initial Determination ("ID") of no violation of Section 337 by respondent Vuly Trampolines Pty. Ltd. ("Vuly").By way of background, the investigation is based on a December 24,...
May 16, 2015
On May 4, 2015, Global Cash Access, Inc. of Las Vegas, Nevada ("GCA") filed a complaint requesting that the ITC commence an investigation pursuant to Section 337.The Complaint alleges that NRT Technology Corp. of Canada and NRT Technologies, Inc. of Las Vegas, Nevada (collectively, "NRT") unlawfully import into the U.S., sell for importation, and/or sell within the U.S. after importation certain...

Patents Post-Grant

May 19, 2015
Today's Federal Register Notice provides the long awaited "quick-fix" rule changes. The rules codify the changes announced on Director Lee's March 27th blog post, which provided for the use of a claim appendix in Motions to Amend, expanded page limits for such Motions, and expanded page limits for Petitioner Replies. The final rules (here) provide additional ministerial changes to conform the...
May 14, 2015
Changes Clarify Expanded Panel Use & Single APJ Institution Decisions As discussed on Monday, recent informative decisions explain the PTAB process for designating expanded panels for AIA trials. To apply the expressed rational of these decisions to the entirety of the Board, the Patent Trial & Appeal Board (PTAB) has revised its Standard Operating Procedure (SOP 1) accordingly. The...
May 13, 2015
CAFC Decides Patent Reissue was Improperly Broadened Based on Previous Markman Definition Yesterday, in ArcelorMittal France v. AK Steel Corp. (CAFC 2015), the CAFC considered the impact of a reissue of U.S. Patent 6,296,805 on a previous appeal decision.  The '805 patent, directed to rolled steel, recited the claim limitation "very high mechanical resistance."  In an earlier...

Protecting Designs

April 17, 2015
The U.S. Patent and Trademark Office (USPTO) held its 9th annual Design Day on April 14, 2015.  The day started off with the Commissioner for Patents, Margaret (Peggy) Focarino, welcoming everyone to Design Day. Commissioner Focarino commented how much Design Day has grown over the last nine years, from a small conference room nine years ago to filling up the entire Madison Auditorium today....
April 16, 2015
On April 14, 2015, the U.S. Court of Appeals for the Federal Circuit ("CAFC") affirmed the Patent Trial and Appeal Board’s decision that Luv N' Care's U.S. Patent Number D617,465 ("the '465 patent") was unpatentable. The PTAB’s decision was the first inter partes review initiated by the USPTO for a design patent. The CAFC issued a Rule 36 judgment that affirmed this decision without opinion...
April 2, 2015
On April 2, 2015, the U.S. Patent and Trademark Office ("USPTO") published its Final Rule on Changes to Implement the Hague Agreement Concerning the International Registration of Industrial Designs ("Hague Agreement").  80 F.R. 63, pp. 17918-17971.  These changes go into effect on May 13, 2015.  Some of the changes only apply to patent applications filed on or after September 16,...