Federal Circuit’s Decision in University of Florida Research Foundation v. General Electric Raises Questions with Subject Matter Eligibility Guidance

Subject matter eligibility jurisprudence under 35 U.S.C. § 101 has been in flux in recent years, following the Supreme Court’s decisions in Mayo v. Prometheus and Alice Corp. v. CLS Bank. On February 26, 2019, the Federal Circuit in University of Florida Research Foundation v. General Electric (available at: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/18-1284.Opinion.2-26-2019.pdf ) held that the challenged claim(s) directed to systems and methods for compiling patient physiologic data from hospital bedside machines were invalid under § 101 as failing steps 2A and 2B under Alice/Mayo. While the decision represents the first Federal Circuit opinion since the publication of the USPTO’s recent guidance addressing invalidity under 35 U.S.C. § 101, it does not specifically address that guidance, neither adopting the two-prong analysis nor rejecting it. Additionally, some may argue that the court’s opinion appears inconsistent with training documents used by the USPTO regarding similar claims.

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Permanent Injunctions for Non-Practicing Entities in Patent Cases

Many patent practitioners assume that non-practicing entities cannot obtain permanent injunctions in patent cases.  This is attributed to the belief that NPEs fail the four-factor test set out by the Supreme Court in eBay.  Given that belief, it is surprising for some to learn that a recent decision from the Northern District of California resurrected decade old case law indicating that non-practicing entities can get injunctive relief.  Practitioners having cases involving NPEs would do well to study this line of reasoning to be prepared for arguments surrounding permanent injunctions. Continue reading this entry

Insurers Must Pay Cost of Defending Case Stemming from Use of Famous Marathoner’s Name

Vibram – seller of the “FiveFinger” shoes – took an intellectual property insurance coverage dispute to the highest court of Massachusetts, and won. The Supreme Judicial Court of Massachusetts held that the insurers must pay Vibram’s cost of defending a lawsuit brought by the family of the late marathoner, Abebe Bikila.  Bikila earned his fame by winning the 1960 Olympic marathon barefoot.  The underlying lawsuit stemmed from Vibram’s use of the Bikila name for some models of its “toed” shoes.  According to the court, Vibram’s use of the Bikila name constituted use of another’s “advertising idea,” covered by the policies.

The heirs of Abebe Bikila’s estate brought the underlying action against Vibram in the United States District Court for the Western District of Washington. The family alleged a number of claims all stemming from Vibram’s use of Bikila’s name, including violation of the Washington Personality Rights and the Washington Consumer Protection Acts, false designation of origin and unfair competition under the Lanham Act, and unjust enrichment.  Vibram tendered defense of the case to its insurers.

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Challenging IPR Institutions Following Federal Court Decision in In re: Power Integrations Inc.

Practitioners should be aware that challenging the PTAB’s decision to deny institution of an IPR got even harder after a recent Federal Circuit decision.  While the Supreme Court has already made clear that challenges to denial of an institution decision can only happen in very specific circumstances, the Federal Circuit’s recent precedential decision in In re: Power Integrations, Inc., 2018-144, 2018-145, 2018-146, 2018-147 (Fed. Cir. Aug. 16, 2018) gives Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016) even more bite.

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False Food Advertising Claims Require Plausibility, Not Possibility

Earlier this year, in Is the “Food Court Closing, we reported indications of a change in the leanings of federal courts in California when viewing class action false advertising allegations regarding food and beverage products at the motion to dismiss stage.  For years, these courts were viewed as interpreting the sufficiency of the allegations in a manner favorable to plaintiffs.  During the past few years, however, these courts began viewing plaintiff’s pleadings more critically.  They have been applying a more stringent legal requirement of claim plausibility consistent with the United States Supreme Court’s. See Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007) (explaining that a pleading must “state a claim to relief that is plausible on its face”); Ashcroft v. Iqbal, 556 U.S. 662, 680 (2009) (explaining that the claim must be “across the line from conceivable to plausible” citing Twombly, 550 U.S. at 570).  Under the Twombly and Iqbal interpretation of the plausibility requirement, the false advertising plaintiff’s pleadings must make plausible that a significant number of reasonable consumers acting reasonably would be deceived by the alleged false claim. See Ebner v. Fresh, Inc., 838 F.3d 958, 965 (9th Cir. 2016) quoting Lavie v. Procter & Gamble Co., 105 Cal. App. 4th 496, 508 (2003).

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