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An IPR petitioner typically must adhere to the arguments set forth in its original petition to institute the IPR, but the petitioner is entitled to respond to new arguments made by the patent owner. New Arguments Allowed, But Not New Prior Art, in Reply to New Claim Construction Where the patent ...

Product configurations may be registered as a trademark on the Principal Register only upon a showing of acquired distinctiveness under Section 2(f). Stuart Spector Designs, Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d 1549, 1554 (TTAB 2009) (“Configurations of products are not inherently ...

Expert witnesses are commonly used in litigation. Typically, an opening expert report is served by one party, and then the other party serves a rebuttal report from its own expert. At the TTAB, a sur-rebuttal expert report may be permitted “under appropriate circumstances, . . .as long as a party...

A product label is misleading if “a significant portion of the general consuming public or of targeted consumers, acting reasonably in the circumstances, could be misled.” Moore v. Mars Petcare US, Inc., 966 F.3d 1007, 1017 (9th Cir. 2020) (analyzing claims brought under the UCL, FAL, and CLRA fo...

U.S. Customs and Border Patrol (“CBP”) can seize imported goods entering the U.S. that bear an infringing a registered trademark or copyright that has been recorded with the CBP. at the was authorized to use its trademark. 19 U.S.C. § 1595a(c)(2)(C) (seizure and forfeiture of “merchandise or pack...

There are two types of trademark strength: conceptual and commercial. In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark's strength is measured both by its conceptual strength … and its marketplace strength ….”). See also Spireon, Inc. v. Flex Ltd., 71 F.4...

A trademark is primarily geographically descriptive when: (1) the mark is the name of a place known generally to the public; (2) the goods for which applicant seeks registration originate in the geographic place identified in the mark; and (3) purchasers would be likely to believe that the goods ...

Federal Rule of Civil Procedure 45(c) defines the geographical scope of a federal court's subpoena power to compel a witness to testify at a trial or other proceeding. A person can be commanded to attend trial “within 100 miles of where the person resides, is employed, or regularly transacts busi...

“Prejudgment interest is a measure that serves to compensate for the loss of use of money due as damages from the time the claim accrues until judgment is entered, thereby achieving full compensation for the injury those damages are intended to redress.” Schneider v. County of San Diego, 285 F.3d...

“Prejudgment interest serves to compensate for the loss of use of money due as damages from the time the claim accrues until judgment is entered, thereby achieving full compensation for the injury those damages are intended to redress.” West Virginia v. United States, 479 U.S. 305, 310 n.2 (1987)...

A party that “intentionally induces another to infringe a trademark” or who “continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement” is “contributorially responsible for any harm done as a result of the deceit.” Inwood Lab'ys, Inc. v. Ives...

Use of a trademark in advertising is not enough to qualify as a specimen of trademark use. In re Siny Corp., 920 F.3d 1331, 2019 USPQ2d 127099 (Fed. Cir. 2019) (“Mere advertising is not enough . . .”); Avakoff v. S. Pac. Co., 765 F.2d 1097, 226 USPQ 435, 436 (Fed. Cir. 1985); In re Anpath Grp., I...

Duracell has a sound mark consisting of three musical notes for its batteries.   “A mark is deemed in use in commerce on goods when, among other things, ‘it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed th...

In United Therapeutics Corp. v. Liquidia Technologies, Inc., No. 2022-2217, 2023-1021, — F.4th — (Fed. Cir. July 24, 2023), United Therapeutics sued Liquidia for infringing two patents. One covering the treatment of pulmonary hypertension using the drug treprostinil (US Pat. 10716793) and the oth...

Monster Energy Co. is known for aggressively defending its trademarks. Indeed, Monster has opposed hundreds of marks at the Trademark Trial and Appeal Board (“TTAB”). In one recent case, after nearly four years of opposition litigation, the TTAB ruled against Monster, holding that there was no li...

“A preliminary injunction is an extraordinary remedy, the exception rather than the rule.” Free the Nipple-Fort Collins v. City of Fort Collins, Colorado, 916 F.3d 792, 797 (10th Cir. 2019) (quotation marks and citation omitted). Irreparable harm is one of the requirements for a preliminary injun...

An element of misappropriation of trade secrets is the acquisition of the trade secret as the result of a confidential relationship or through improper means. The Sixth Circuit recently addressed how a plaintiff “failed to address the confidential relationship component” of its trade secret claim...

The Ninth Circuit has held, “as a matter of first impression, that by registering a derivative work, an author registers all of the material included in the derivative work, including that which previously appeared in an unregistered, original work created by the author.” Enterprise Mgmt.Ltd. Inc...

Embedding, sometimes also referred to as framing, provides instructions to a browser for a third-party website (the embedding website) to incorporate content directly from the website where it originally appeared (the host website). The browser automatically retrieves and shows the content from t...

For a Section 2(d) refusal based on another's prior trademark registration, “[t]he weaker [the registrant's] mark, the closer an applicant's mark can come without causing a likelihood of confusion and thereby invading what amounts to its comparatively narrower range of protection.” Juice Generati...

Patent-eligible subject matter is “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. But “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 57...

Once a patent is granted, a patentee may seek to change the scope of the claims through reissue, subject to the additional statutory limitations in 35 U.S.C. § 251, including that the reissue claims must be directed to “the invention disclosed in the original patent.” Antares Pharma, Inc. v. Meda...

“Unjust enrichment is a judicially created remedy designed to avoid benefit to one to the unfair detriment of another.” Lawry v. Palm, 192 P.3d 550, 564 (Colo. App. 2008). In Colorado, unjust enrichment requires that: “(1) defendant received a benefit (2) at the plaintiff's expense (3) under circ...

A Rule 50(a) motion for judgment as a matter of law may be made before a case is submitted to a jury. See Fed. R. Civ. P. 50(a)(2). If the court does not grant the motion, a “renewed motion for judgment as a matter of law” may be filed after entry of judgment. See Fed. R. Civ. P. 50(b)(2). Also, ...

The motivation-to-combine portion of the obviousness inquiry is whether a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention. Allied Erecting & Dismantling Co. v. Genesis Attachments, LLC, 825 F.3d 1373, 1381 (Fed. Cir. ...