Imagine That IP Law Blog

On January 9, 2024 Relish Labs LLC (Relish) and its parent corporation The Kroger Co. (Kroger) filed a Petition for a Writ of Certiorari to the U.S. Supreme Court, seeking review of the Seventh Circuit’s refusal to issue a preliminary injunction against Grub Hub’s use of the orange fork and knife logo. Grubhub Inc. v. Relish Labs LLC, 80 F.4th 835 (7th Cir. 2023). Relish Labs LLC owns the HOME CHEF logo that also utilizes a fork and knife design. See Petition here.

Kroger’s Petition asks SCOTUS to determine once and for all if the determination of a likelihood of confusion is a factual ... Read More ›

Online sellers whose primary income results from sales on third party marketplaces must be vigilant in making sure they have notice of lawsuits filed against them or their products. A litigation process referred to as “Schedule A” that is becoming more prevalent has provided patent and brand owners with what can be a potent enforcement tool. These “Schedule A” cases may not put a seller on notice that they have been sued for intellectual property infringement. A temporary restraining order (TRO) could issue against an online marketplace, which could result in an immediate ... Read More ›

In patent claim drafting, two distinct ways to claim combinations of elements are Markush and Superguide constructions. Both approaches have been explored in recent case law, particularly with respect to the significance of proper syntax when reciting the limitation of “at least one” when it precedes a series of elements. A closer look at both the Markush and Superguide approaches for reciting elements in combination offers guidance to avoid traps for the unwary.

Superguide
Of the two, the Superguide construction is likely simpler. In exploring Superguide v. DirecTV as a ... Read More ›

The U.S. Patent and Trademark Office (USPTO) recently announced on December 2, 2023 the Semiconductor Technology Pilot Program (STPP), which is designed to support the Creating Helpful Incentives to Produce Semiconductors (CHIPS) Act of 2022 by expediting the examination of patent applications related to semiconductor technology.  More specifically, the STPP is designed to encourage research, development, and innovation in semiconductor manufacturing.

Under the STPP, an applicant must file a timely “petition to make special” using the required petition form (Form ... Read More ›

The recent September 2023 Federal Circuit decision in Elekta Ltd. v. Zap Surgical Systems, Inc., Case No. 21-1985 (Fed. Cir. 2023) shows that patent applicants should give consideration to formally addressing – on the record during prosecution - the relevance of the prior art references disclosed in their information disclosure statements (“IDSs”) to avoid later misinterpretation by tribunals in potential future Inter Partes Review (IPR) proceedings and court decisions.  Such misinterpretation may lead a tribunal to combine IDS references from irrelevant fields and ... Read More ›

In an Inter Partes Review (IPR), one of the arguments that a patent owner can raise against petitioner’s argument for unpatentability based on obviousness is that the asserted prior art is not analogous art.  According to the Federal Circuit, “[t]wo separate tests define the scope of analogous prior art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is ... Read More ›

When a party wishes to challenge the validity of another's patent, the party may chose to file a Petition Inter Partes Review (IPR) with the United States Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (PTAB). If the Petition fails to provide sufficient evidence to  to demonstrate a reasonable likelihood of success on the merits, the PTAB will deny institution of the IPR.

For example, the Petition is required to include “[a] full statement of the reasons for relief requested, including a detailed explanation of the significance of the evidence including ... Read More ›

In the case of In re Cellect, the Federal Circuit upheld a United States Patent and Trademark Office (USPTO) decision that the patentee’s (Cellect’s) patents were unpatentable due to Obviousness-type Double Patenting (ODP). In reaching its decision, the Court ruled that Patent Term Adjustments (PTA) and Patent Term Extensions (PTE) should be treated differently when considering ODP.

In particular, the Court held that when different patent family members have different expiration dates based on PTA, the patent family members that expire on an earlier date can be relied upon ... Read More ›

“Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.” Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016). Accordingly, the Patent Trial and Appeals Board (PTAB) rules state the Petitioner must “seek leave to file a reply” to a Patent Owner’s Preliminary Response (POPR) and “ [a]ny such request must make a ... Read More ›

The Federal Circuit issued a decision in In re Cellect on August 28, 2023 which may have far-reaching consequences during the assertion of one or more patents that are related members in a patent family, and that include claims that may be subject to an argument for invalidity for obviousness-type double patenting (ODP). The Federal Circuit found that when two or more related family member patents in a patent family cover similar enough or overlapping inventions, ODP can be applied to invalidate one of the patents where the related family member patents expire at different times due to ... Read More ›