Imagine That IP Law Blog

On Tuesday, the Federal Circuit issued an en banc decision in LKQ Corp. et al. v. GM Global Technology Operations LLC, case number 21-2348 (Fed. Cir. May 21, 2024) (en banc) overruling decades long precedent for challenging design patents based on obviousness under 35. U.S.C. § 103.

The prior test, known as Rosen-Durling, required as a primary reference an earlier design that had "basically the same" visual impression as the patented design, to which features could be added from additional prior art designs that are "so related" to it that the appearance of features in one design ... Read More ›

Artificial Intelligence (AI) is all the rage and grabs the public’s attention for its almost instantaneous song writing feats to creating deep fakes of all sorts. The possibility of having an almost instantaneous answer to a problem may prompt an employee to seek the answer AI can provide. Even if your company’s employee understands that the initial AI answer may be refined by follow up questions, this does not mean that the final result is not an intellectual property problem for your organization. Many companies believe their operations are such that the risk of IP infringement ... Read More ›

At times, corporate stakeholders may consider IP due diligence as slowing down business instead of creating and preserving value. However, pro-active trademark portfolio development and management can often streamline business resources, help jumpstart new brand initiatives, generate added asset valuations, and minimize downtime when expanding into new territories. This article discusses important trademark basics as well as common questions and issues in-house counsel often encounter during due diligence or IP audits.

What is a Trademark?
At a very high level, a ... Read More ›

In 2022, when asked whether an artificial intelligence could be an inventor on a patent, the United States Court of Appeals for the Federal Circuit definitively answered “no.” Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022). But does this mean that inventions made with AI systems are completely ineligible for patenting? In a new memo published Tuesday in the Federal Register, the United States Patent and Trademark Office (USPTO) also says “no.”  “Inventorship Guidance for AI-assisted Inventions,” 89 FR 10043 (USPTO, February 13, 2024).

In Thaler v. Vidal, the ... Read More ›

When drafting method claims, a strategic patent practitioner must keep in mind whether any portion of the claim language will be interpreted by a Patent Examiner, PTAB tribunal, or Federal Circuit as conditional. Initial considerations may include whether conditional claim language will even serve the objective of protecting an invention and what types of claim terms may explicitly or implicitly invoke a conditional limitation. If claims include a conditional limitation, how might that affect an Examiner’s prior art search, and what would be required for infringement? A ... Read More ›

The Pokémon Company considers legal action against Palworld for intellectual property violations. On January 25, The Pokémon Company issued a statement on its Japanese website where it confirmed it intends to investigate “another company’s game” that was released in January 2024.

For gamers, this is an obvious nod to Palworld which has made headlines since its recent launch as many believe the animated world has strong similarities to Pokémon.  With over 8 million downloads in six days, legal action by The Pokémon Co. and its co-owner Nintendo appears imminent. The value ... Read More ›

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 ›