Top10 IP cases of 2019

It's that time of year again. Without further ado, following are the top 10 IP cases of 2019: 1. Tom Terrific A U.S. Trademark Office examiner was on her game when Tom Brady applied to register "Tom Terrific" as a trademark in a first application for T-shirts and in a second application for trading cards, posters and photographs. The examiner rejected both applications as applying for a mark "which falsely suggests a connection with [Hall of Fame pitcher] Tom Seaver," citing numerous news articles referring to Tom Seaver by the nickname "Tom Terrific." Brady's company has until Feb. 22 to respond. Turns out there is also an expired registration by CBS for the "Tom Terrific" cartoon that those of a certain age will remember from "Captain Kangaroo." Before you Patriots fans inundate me with hate mail, know that I am also a fan and that the GOAT later went on record as saying he hated that nickname and only applied so others couldn't use it. Trademark attorneys will tell you, however, that that doesn't exactly jive with trademark law. 2. Secret sales still a bar Inventors have one year to file a U.S. patent application from the date the invention was placed on sale. Before the enactment of the American Invents Act in 2013, it did no good to try and argue the sale was secret and not generally known to the public. But the AIA amended the statute to be applicable to inventions on sale or otherwise available to the public. Helsinn Healthcare S.A. invented Aloxi, a drug that treats chemotherapy-induced nausea and vomiting. Helsinn contracted with MGI Pharma to market and distribute Aloxi under restrictions to keep confidential certain information such as the dosage of the active ingredient in Aloxi. Then, two years later, Helsinn filed its first patent application. When Teva Pharmaceuticals Industries sought FDA approval for a generic version of Aloxi, Helsinn sued for patent infringement. Teva asserted the patent was invalid under the on-sale bar, and Helsinn countered that its "secret sale" didn't count under the AIA, arguing the "otherwise available to the public" language in the AIA changed the law concerning secret sales. The Supreme Court sided with Teva. Pre-AIA cases clearly held that the focus is "on whether the invention had been sold, not whether the details of the invention had been made available to the public and the addition of 'or otherwise available to the public' is simply not enough of a change for us to conclude that Congress intended to alter the meaning of the reenacted term 'on-sale.'" File early and often. 3. Bankruptcy protection for trademark licensees If you license a patent from a company that goes bankrupt, the bankruptcy laws generally allow you to continue licensing the patent. What if you license a trademark from a company that later files for bankruptcy? Here, the bankruptcy laws are not as clear. In Mission Products Holdings, Inc. v. Tempnology, LLC (May 20), the Supreme Court held a trademark licensee can continue using the trademark. So, trademark licensees, like patent licensees, are now better protected in cases in which the licensor goes bankrupt. But expect and watch for clever attorneys who attempt to circumvent this holding in trademark licensing agreements. Having to stop selling a product under a valuable licensed trademark could result in damages to your client's company that probably will not be fully recoverable in the bankruptcy proceedings. 4. The First Amendment continues to trump trademark laws In 2017, the Supreme Court invalidated the Trademark Act's bar on registration of disparaging marks in a case holding "Slants" for a rock band could be registered. At issue in Iancu v. Brunetti (June 24) was the Trademark Act's bar on the registration of immoral or scandalous marks. Brunetti applied to register FUCT for a clothing brand. On First Amendment grounds, the Supreme Court invalidated the "immoral or scandalous" bar of the Trademark Act. So trademark applicants can now register marks that are disparaging, immoral and/or scandalous. Reasonable minds can disagree over the desirability of this holding. 5. © Registration before suit Unlike patents, copyright applications are a form to be filled out, and the Copyright Office's review and issuance of the registration is usually perfunctory. For years, there has been a split in the courts as to whether a filed application is enough in order to bring a copyright infringement suit (after all, the registration process almost always results in a registration that is backdated to the date of the application) or rather whether the plaintiff has to actually have a registration in hand before suing. In Fourth Estate Public Benefit Corp v. Wall-Street.com, LLC (March 4), the Supreme Court held there could be no lawsuit until you have a registration in hand. A registration in hand before any infringement occurs is also beneficial because it entitles the registrant to receive statutory damages and attorney fees. And note that, for a fee, the registration process can be expedited. So register your client's content early and often. 6. U.S. government is not a person Inter-Parties Review of a patent by the Patent Office is a creature of the AIA and used quite regularly, often successfully, to challenge a patent a business is accused of infringing. In 2019, a few cases clarified certain aspects of the IPR procedure. In Return Mail, Inc. v. United States Postal Service (June 10), the Supreme Court held the government cannot challenge patents via an IPR because the statute limits IPR challenges to "persons" and the government is not a person. In Regents of the University of Minnesota v. LSI Corp. (June 14), the Court of Appeals for the Federal Circuit held it cannot review an IPR decision by the Patent Office on appeal unless the appealing party can demonstrate Article III standing (e.g., competitive injury). 7. Patent ineligibility bleeds into hardware cases Patent attorneys like me handling mechanical engineering inventions usually don't face Patent Office rejections based on an invention constituting an abstract idea or natural law that are exclusions to patentable subject matter. Until now. Detroit-based American Axle and Manufacturing had won U.S. Patent No. 7,774,911 for a method of manufacturing a drive shaft including a liner inserted into the shaft and tuned to attenuate both shell mode and bending mode vibrations. When a competitor (NEAPCO) began manufacturing drive shafts the same way, AAM sued for patent infringement. But the Federal Circuit invalidated the patent as constituting an ineligible concept: "[T]though we recognize that AAM may be correct in its assertion that the system involved in the '911 patent is more complex than just a bare application of Hooke's law, and that other laws of nature may be relevant, that does not render the subject matter patent eligible. What is missing is any physical structure or steps for achieving the claimed results of damping two different types of vibrations. The focus of the claimed advance here is simply the concept of achieving that result, by whatever structures or steps happen to work." As if patent protection isn't already expensive enough, expect higher costs if this case is followed. 8. AI and IP In 2019, several law schools, various patent offices around the globe, and others teed up conferences on artificial intelligence and intellectual property. Can a computer or robot invent something, and if it does, who owns the resulting patent if a machine, and only the machine, "conceived" of the invention? Same question for any content or data output by an AI system (see also the selfie monkey debate). These issues, still to be worked out, will be increasingly important given the current AI patenting boom. 9. iRobot v. Shark Ninja Two Massachusetts companies recently went toe to toe in a patent infringement case in Boston's federal District Court. iRobot (Bedford), maker of the Roomba robotic vacuum cleaner, asserted six patents against Shark Ninja's (Needham) Shark IQ Robot and filed a motion for preliminary injunction on Oct. 15, 2019. Shark Ninja countered that the iRobot patents were not infringed (Shark Ninja made out a case that it deliberately steered clear of the iRobot patents), and also that the iRobot patents were invalid. Judge Allison Burroughs moves fast. On Oct. 20, she held a hearing and issued her opinion on Nov. 27, siding with Shark Ninja. 10. Preview of Supreme Court IP cases in 2020 The U.S. Supreme Court has already accepted four IP cases for review in 2020. Romag Fasteners, Inc. v. Fossil, Inc.: Whether, under the Trade­mark Act, willful infringement is a prerequisite for an award of the infringer's profits in a trademark violation case. Peter v. Nantkwest: Can the Patent Office collect its attorneys' fees when an inventor sues in District Court alleging the Patent Office erred in not granting a patent even when the inventor wins? Florida Prepaid v. College Savings Bank: Whether the states have sovereign immunity in copyright infringement lawsuits. Thryv v. Click-Two-Call Technologies: Whether or not the Patent Office's decision to institute an IPR is subject to appellate review. ----- Kirk Teska is managing partner of Iandiorio, Teska & Coleman in Waltham. He is an adjunct professor at Suffolk University Law School and the author of two books: "Patent Savvy for Managers" (NOLO) and "Patent Project Management" (ASME Press). Published: Tue, Jan 14, 2020