In an unprecedented PTAB decision involving Spectrum Solutions LLC (“Spectrum”) (Petitioner) and Longhorn Vaccines & Diagnostics (“Longhorn”) (Patent Owner), the Board found all five challenged patents invalid and imposed sanction against patent owner Longhorn for failure to meet the duty of candor and fair dealing. The board determined that Longhorn selectively disclosed testing results to support its claim construction and misled its technical expert with incomplete laboratory data, thereby failed to meet its duty of candor and fair dealing in its actions before the Board. The claims and substitute claims in all five patents asserted by Longhorn were unpatentable due to its sanctionable misconduct. Longhorn was also ordered to provide Spectrum compensatory expenses including attorney fees. On one hand, it is a reminder that duty of candor is a continuing obligation that cannot be ignored even during the IPR proceeding. On the other hand, it does raise the question whether the PTAB has the authority to invalidate a patent for misconduct.
USPTO Updates to Interim Director Review of PTAB Decisions
By James Anderson & Tamaria Dewdney on
On July 24, 2023, the United States Patent and Trademark Office (USPTO) announced updated procedures for the interim Director Review (DR) of Patent Trial and Appeal Board (PTAB) decisions. The updated procedures could help patent practitioners manage costs by providing a new mechanism for recourse following PTAB decisions.
USPTO Announces Slate of Proposed Rule Changes
By James Anderson on
On April 20, 2023, the United States Patent and Trademark Office (USPTO) announced several proposed rule changes that would have an impact on patent applicants, patent holders, and patent challengers. A common thread running through several of the rule changes is the requirement of increased disclosure from litigating parties, including disclosures of related parties, ownership interests, and all settlement agreements (and any related or collateral agreements) between the parties. While the proposed rule changes are subject to a public comment period, if implemented, they would (i) introduce several major changes to the process of challenging patents before the Patent Trial and Appeal Board (PTAB) and (ii.) significantly increase USPTO administrative fees.
New York and Chicago-Style Pizza Wars: The Trademark Edition
By Jennifer Yang on
The great pizza wars of 2021 are not what you might expect. While the courts will never be able to resolve the question of who (or where) makes the best pie, a pair of decisions from the last few weeks did resolve contentious trademark disputes in two of the great pizza destinations of the world, between Patsy’s Pizzeria and Patsy’s Italian Restaurant in New York, and between shareholders of Rosati’s in Illinois.
To Register a “Generic.com” Term, Show that Consumers Perceive It As Not Generic
By Tiffany Woo on
The U.S. Patent and Trademark Office has issued guidance on how it will treat applications to register “generic.com” terms in the wake of the Supreme Court’s June 30, 2020 decision in United States Patent and Trademark Office v. Booking.com.
We previously wrote about the Supreme Court’s Booking.com decision, which affirmed the Fourth Circuit’s decision that the mark BOOKING.COM was registrable and not generic. The Supreme Court’s decision tracked the arguments in an amicus brief we submitted on behalf of consumer perception specialists and academics from leading U.S. universities.