Imagine That IP Law Blog

Tesla CEO Elon Musk once explained that “in certain sectors like automotive, solar, and space, you don’t see new entrants.”¹ The auto industry, in particular, rebuffs new startups with a host of ominous caveats: the inability to appraise the future of the industry, the protracted history of broken manufacturers – thousands of them, in fact – and the calculated entry of the major tech companies, like Apple and Google, that seek to challenge the incumbents for market share. Building and delivering cars to the end user has always been a battle of attrition. So the emerging ... Read More ›

In Arthrex, Inc. v. Smith & Nephew, Inc., Arthrocare Corp., No. 2019-2140 (Fed. Cir. October 31, 2019), the Federal Circuit raised Patent Owners’ hopes that inter partes review (IPR) of patents could potentially be constitutionally defective, based on how Patent Trial and Appeal Board (PTAB) judges are appointed. But the court then dashed those hopes by curing the constitutional defect in the statute controlling Administrative Patent Judge (APJ) appointment. For those accused of patent infringement, breathe easy; IPRs survive and can be used to minimize the threat of patents.Read More ›

OSI Pharmaceuticals, LLC (OSI) discovered and patented a method of treating non-small cell lung cancer (NSCLC). See US Patent No. 6,900,221. The method comprises administering a therapeutically effective amount of erlotinib to an NSCLC patient. Apotex Inc. (Apotex) challenged OSI’s patent by filing a petition for Inter Partes Review (IPR) at the United States Patent and Trademark Office (USPTO). Three references were produced during the IPR, as follows:

(1) The reference “Schnur” disclosed erlotinib along with 104 other different compounds, as potent inhibitors of a ... Read More ›

Google^® CEO Sundar Pichai demonstrated the capabilities of Google Assistant onstage at Google I/O.¹ Triggered by a voice command, the Google Assistant software seamlessly and successfully communicated with a hair salon employee, via a phone call that the software initiated, to book the appointment. Pichai explained that Google Assistant actually “understand[s] the nuances of conversation” by combining natural language understanding, deep learning and text-to-speech technology. This represents a new and less blatantly artificial development in the scope of AI ... Read More ›

Under 35 U.S.C. § 171 of the Patent Act, patent protection is provided for a “new, original and ornamental design for an article of manufacture.” Design patents cover the appearance of an article of manufacture. Design patents have been used to obtain patent protection on the appearance of articles including hair scrunchies, sneakers, paintball goggles, and almost any other consumer product one can think of.

Design patents are essentially comprised of a title, drawings, and a description of the drawings. In design patents, unlike utility patents, the claimed scope is defined ... Read More ›

Kaiser, K. et al. recently reported their synthesis of a brand new carbon molecule, cyclo[18]carbon. The structure and synthesis of cyclo[18]carbon, an 18 ring carbon chain with no substituents, is detailed in Kaiser et al. “An sp-hybridized molecular carbon allotrope, cyclo[18]carbon” (2019) Science Online.

Cyclo[18]carbon is an exciting development, as this molecule has never existed before now and some researches doubted that the molecule could be stably made in the lab. It provides important insights into the organic synthesis of complex carbon-based molecules ... Read More ›

While it is sometimes the case that intellectual property lawsuits involve subject matter that is overly technical or perhaps difficult to relate to, there are times when these lawsuits involve subjects from popular culture that capture the imagination. That is just the case with two recent lawsuits, one involving a beloved figure in Philadelphia sports, and the other focused on the Old Spice commercial jingle.

The subject matter of The Phillies, L.P. v. Harrison/Erickson, Incorporated et al, 1:19-cv-07239 (August 2, 2019), pending in the U.S. District Court for the Southern ... Read More ›

Does a generic term in one country render trademark protection unavailable in another? Not in the U.S.!

Under U.S. law, generic trademarks are common terms used to refer to products or services. What you’re using right now to read this blog post – a computer, a phone – no one can claim rights to these terms. Generic trademarks are not qualified for protection and cannot be registered.  Conversely, even the strongest of trademarks can, over time, become generic and lose their registration. Products like aspirin, linoleum, and yo-yo were once registered as federal trademarks ... Read More ›

The ever increasing speed at which information travels over social media and the expanding volume of information available on the internet has helped and hindered small and start up enterprises. It is easier to get recognition through social media but that recognition does not always translate into revenue. Likewise, it is easier to find information but the reliability of the information can be suspect. All of this matters because long term business success is often the result of the access to funds for the next phase of research, marketing and expansion. The concern here is the ... Read More ›

On March 20, 2019, the Federal Circuit Court of Appeals issued an opinion that may bring some long-awaited good news for wireless patent holders. In particular, in SRI Int’l, Inc. v. Cisco Sys., the Federal Circuit found methods for improving security of a computer communication network to be patent-eligible subject matter under 35 U.S.C § 101. SRI Int’l, Inc. v. Cisco Sys. Inc., No. 2017-2223, 2019 U.S. App. LEXIS 8249, *1, *4 (Fed. Cir. 2019). This news comes in the wake of Federal Circuit decisions in 2016 and 2018, respectively, that found methods of 3G authentication and ... Read More ›