Trade Dress: An Unsuitable Fit for Product Design in the Fashion Industry

Shayna Ann Giles

Fashion design is an uneasy fit for intellectual property law. Because trade dress is not clearly defined in the Lanham Act, the courts were able to expand this area of intellectual property to protect product design in the fashion industry. Congress does not concur with this expansion, as demonstrated by the lack of legislative action in the face of multiple opportunities to grant protection to fashion design. Despite Congressional intent, the courts attempted to fit fashion design into various types of intellectual property law, beginning with copyright and patent. After realizing that neither of those were an appropriate fit for fashion design, the courts settled on trademark law and more specifically trade dress.


The Problem of Mop Heads in the Era of Apps: Toward More Rigorous Standards of Value Apportionment in Contemporary Patent Law

David Franklyn & Adam Kuhn

In 1884, the U.S. Supreme Court rejected a damage claim on a patented mop head improvement for failure to apportion profits attributable to the patented feature against the entire mop. 130 years later, jurists deal with the same core challenge of damage apportionment except with much more complicated products. Given the fact that as many as 250,000 patents impact the average consumer smart phone, can anyone say confidently that any single one of these patents drives consumer demand for the whole product or even for any particular feature of the product? And if not, how much worth does any one patent have in relation to the value of the entire product? For example, what portion of the sales price of an iPhone is attributable to a particular individual feature of that phone, such as the ability to use FaceTime?


Joinder of Unrelated Infringers as Defendants in Patent Litigation Under the Jurisprudence of the United States District Court for the Eastern District of Texas - A Critical Review

Ping-Hsun Chen

In 2011, the Leahy-Smith America Invents Act (“AIA”) was enacted. 35 U.S.C. § 299 was created to limit district court’s power to permit joinder of unrelated infringers as defendants in a single lawsuit. Before that, district courts apply Rule 20 of the Federal Civil Procedure. The Eastern District of Texas had permitted joinder only because the same patent was infringed.



Stays Pending Inter Parties Review: Not in the Eastern District of Texas

Douglas B. Wentzel

Grant rates for stays of patent litigation pending the outcome of IPRs are now falling despite initially being very high. Use of IPRs is increasing, as is the likelihood that defendants will seek to stay litigation pending the resolution of these proceedings. Defendants should recognize that obtaining a stay pending IPR outcome is particularly challenging in the most popular patent litigation venue, the Eastern District of Texas.

Recent scholarship analyzes the general success rates of motions to stay pending IPR, but has yet to consider in depth the differential treatment of motions to stay pending IPR nationwide versus solely in the Eastern District of Texas, or treatment of these motions to stay in NPE-filed patent litigation. Treatment of stays pending IPR in exclusively NPE-filed cases in the Eastern District of Texas is significant because NPE-filed cases constitute more than two-thirds of all infringement cases filed in 2015 and NPEs filed almost half of all 2015 patent cases in the Eastern District of Texas.


Written By: John Kirkpatrick

Indacon sued Facebook for infringing U.S. Patent No. 6,834,276 (hereinafter the “’276 patent”), directed to “searching, indexing, perusing, and manipulating files in a database … through the insertion of automatically generated hyperlinks.”  Indacon at *2.  Appealing a finding of noninfringement by the district court, Indacon disputed the construction of the claim terms “alias,” “custom link,” “custom linking relationship,” and “link term.”  As no extrinsic evidence was introduced, the Federal Circuit reviewed, de novo, the specification and the prosecution history to determine the correct construction.


Written By: Roland Casillas
      Web and Blog Editor

Patent No. U.S. 5,527,039 A

Golf Swing Training Aid

Inventors: Claude A. Levesque


Written By: David Youngkin

In In Re: Gregory E. Urbanski, Kevin W. Lang the Federal Circuit upheld the decision of the USPTO Patent Trial and Appeal Board (Board) finding the claims of the application obvious.  Urbanski’s application at issue was U.S. 11/170,614, entitled “Protein and Fiber Hydrolysates”, and was directed to a method of enzymatic hydrolysis of soy fiber.  Relevant to the appeal was claim 43 which required “that the soy fiber and enzyme be mixed in water for 60 to 120 minutes”.


Written By: John Kirkpatrick

Redline instituted an inter partes review (IPR) to show that claims 9 and 10 of U.S. Patent No. 6,526,808 (the ’808 patent), owned by Star, would have been obvious.  Redline did not include expert testimony to support its grounds in its IPR petition.  Upon institution of the IPR on two of the twelve grounds proposed in Redline’s petition, Redline submitted a motion for supplemental disclosure including expert testimony pursuant to 37 C.F.R. § 42.123(a), which allows for supplemental information “relevant to a claim for which the trial has been instituted” to be submitted “with-in one month of the date the trial is instituted.”  The USPTO PTAB denied Redline’s motion finding that the supplemental information could have been submitted with Redline’s petition and did not comply with the PTAB’s “statutory mandate for economy, integrity, efficient administration, and timely consideration of IPRs.”  Redline at *14.  The PTAB then rejected the grounds, noting that Redline “did not rely on an expert declaration in support of its position.” Id. at *12.  While Redline admitted that it intentionally delayed filing the expert information because submitting information for two grounds is less of a burden than submitting information for twelve grounds, Redline, on appeal, argued that the PTAB must allow the motion as long as the timeliness and relevance requirements of §42.123(a) are met.

© 2000-2014, Journal of the Patent & Trademark Office Society
Disclaimer & Privacy Policy