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June 27, 2023 Decisions in Brief

June/July 2023 Decisions in Brief

John C. Gatz

©2023. Published in Landslide, Vol. 15, No. 4, June/July 2023, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.


Ninth Circuit Affirmed Validity of Unicolors’ Registration

➤ Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 52 F.4th 1054, 2022 U.S.P.Q.2d 1076 (9th Cir. 2022). This case was on remand from the U.S. Supreme Court decision in Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 142 S. Ct. 941 (2022), where the Court held that a lack of legal or factual knowledge of an error in a copyright registration is excusable under the Copyright Act’s safe harbor provision, 17 U.S.C. § 411(b). On remand, the Ninth Circuit reviewed whether Unicolors’ copyright registration was valid. The Ninth Circuit determined that the registration was valid because the factual inaccuracies therein were excused under the Copyright Act, given the Supreme Court’s recent decision. Thus, the Ninth Circuit affirmed the district court’s earlier judgment against H&M finding that Unicolors had a valid copyright registration and that H&M infringed the registration.

The threshold issue on appeal was whether Unicolors’ copyright registration was valid. This question was important because registration is a prerequisite to bringing a federal claim for copyright infringement. Section 411(b)(1) provides a safe harbor for copyright claimants whereby a registration is valid despite containing inaccuracies unless the claimant knowingly transmitted inaccurate, material information in the application. The Ninth Circuit previously held that the Copyright Act’s safe harbor provision did not apply to situations where the registrant lacked knowledge of the law (only knowledge of the facts). However, in view of the Supreme Court’s decision, the Ninth Circuit concluded that Unicolors’ lack of knowledge of the legal error in the registration was subject to the safe harbor provision. The Ninth Circuit held that a party seeking to invalidate a copyright registration under § 411(b) “must demonstrate that (1) the registrant submitted a registration application containing inaccuracies, (2) the registrant knew that the application failed to comply with the requisite legal requirements, and (3) the inaccuracies in question were material to the registration decision by the Register of Copyrights.” Unicolors, 52 F.4th at 1067. In other words, a registration is invalid if a claimant committed fraud on the Copyright Office by knowingly misrepresenting material facts in an application.

The registration at issue contained a material error. The registration covered a collection of individual works; however, a single application may only protect multiple works in certain circumstances. One such circumstance is where the individual works are first published together as a single unit of publication. A collection of works does not qualify as a single unit of publication unless all of the works included in the collection were first published together in a singular, bundled unit. Because this was not the case for Unicolors’ collection of works, the registration included a material inaccuracy.

The Ninth Circuit affirmed the district court’s conclusion that Unicolors did not knowingly submit the application with false information and had no intention to defraud the Copyright Office. As such, Unicolors’ registration was valid.


Anticipation/Prior Publication or Sale

Mosaic Brands, Inc. v. Ridge Wallet LLC, 55 F.4th 1354, 2022 U.S.P.Q.2d 1245 (Fed. Cir. 2022). The Federal Circuit reversed and remanded the district court’s summary judgment determination regarding validity based on anticipation. At issue was whether there was sufficient corroborating evidence of prior publication and sale of an asserted prior art device, thus resulting in anticipation of the patent. The Federal Circuit agreed with the district court that trade show invoices and a supporting declaration were sufficient evidence of corroboration. However, the Federal Circuit reversed and remanded, holding that the corroboration evidence would not necessarily lead every reasonable fact finder to conclude that the patent claims were anticipated. The Federal Circuit stated that even if the opposing party did not provide affirmative evidence challenging the inventor’s testimony, “affirmative evidence is not always necessary in order to create a genuine dispute.” Instead, the Federal Circuit remanded to allow Ridge an opportunity to cross-examine the inventor and, thus, allow the fact finder to evaluate his credibility.

Claim Construction

Finjan LLC v. ESET, LLC, 51 F.4th 1377, 2022 U.S.P.Q.2d 1031 (Fed. Cir. 2022). The Federal Circuit reversed in part, vacated in part, and remanded the district court’s grant of summary judgment of invalidity based on indefiniteness. The Federal Circuit found that the district court erred in finding differing definitions of the same term within a patent family and relying on the most restrictive definition. Although a prior patent used a term, that term was not used in the present claim and therefore should not have been read into the claim.

VLSI Technology LLC v. Intel Corp., 53 F.4th 646, 2022 U.S.P.Q.2d 1090 (Fed. Cir. 2022). The Patent Trial and Appeal Board (PTAB) did not err in adopting its own claim construction that was different than, but not inconsistent with, a district court’s claim construction for the same patents. The parties’ disputes in the inter partes reviews (IPRs) required the PTAB to further construe the claim limitation to resolve those disputes. However, the PTAB’s claim construction for one independent claim was too broad, and the Federal Circuit remanded for the PTAB to assess the obviousness grounds in view of the correct claim construction.

Collateral Estoppel

Google LLC v. Hammond Development International, Inc., 54 F.4th 1377, 2022 U.S.P.Q.2d 1191 (Fed. Cir. 2022). The Federal Circuit reversed in part and affirmed in part the final written decision of the PTAB. Google petitioned for an IPR of Hammond’s two patents. Both patents were related and shared the same specification. The PTAB held that certain claims of the first patent were not unpatentable. On appeal, Google argued that the PTAB’s determination that one patent claim of the first patent was unpatentable rendered a related claim of the second patent unpatentable based on collateral estoppel. The Federal Circuit agreed and reversed the PTAB’s determination. The Federal Circuit affirmed the PTAB’s determinations with respect to claims that Google failed to show would have been obvious.

Eligible Subject Matter

ADASA Inc. v. Avery Dennison Corp., 55 F.4th 900, 2022 U.S.P.Q.2d 1232 (Fed. Cir. 2022). The Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded the district court’s judgment. The Federal Circuit affirmed the district court’s grant of summary judgment with respect to eligibility and reversed with respect to anticipation and obviousness. The Federal Circuit also affirmed the denial of a new trial and vacated the district court’s award of sanctions and remanded. The Federal Circuit concluded that when the claim was viewed in light of the specification as a whole, it was directed to patent-eligible subject matter. The Federal Circuit found that the district court erred by reading the reference too narrowly and by failing to view the relevant witness testimony in Avery Dennison’s favor with respect to anticipation or obviousness, and found that a genuine dispute of fact existed regarding anticipation.

Hatch-Waxman Litigation

➤ Genentech, Inc. v. Sandoz Inc., 55 F.4th 1368, 2022 U.S.P.Q.2d 1254 (Fed. Cir. 2022). The Federal Circuit affirmed the district court’s finding of unpatentable as obvious for one set of claims and no direct infringement for another class of claims in this Hatch-Waxman case. Genentech’s first set of claims related to liver function tests, and the Federal Circuit agreed that those claims were obvious, finding that the asserted claims did not describe a new drug or a new application of an existing drug. The second class of claims related to drug-drug interaction, specifically methods for avoiding adverse interactions between pirfenidone and fluvoxamine. Although Sandoz’s proposed label discussed discontinuing fluvoxamine or modifying administration of pirfenidone, which Genentech argued encouraged, recommended, or promoted direct infringement of its claims, the district court gave significant weight to physician evidence that they would never and had never prescribed pirfenidone to a patient taking fluvoxamine. The district court found, and the Federal Circuit agreed, that Genentech failed to show that if Sandoz’s product were on the market that it would directly infringe Genentech’s asserted claims.

Inter Partes Review

American National Manufacturing Inc. v. Sleep Number Corp., 52 F.4th 1371, 2022 U.S.P.Q.2d 1085 (Fed. Cir. 2022). The Federal Circuit affirmed the PTAB’s mixed decisions in two IPRs. In particular, the PTAB did not err in allowing a motion to amend including some claim amendments that directly responded to the unpatentability grounds in the petition and other amendments that were not responsive to the grounds in the petition.

Cupp Computing AS v. Trend Micro Inc., 53 F.4th 1376, 2022 U.S.P.Q.2d 1093 (Fed. Cir. 2022). In an appeal from three IPR proceedings, the Federal Circuit affirmed the PTAB’s claim constructions and found that its obviousness findings were supported by substantial evidence. The Federal Circuit also confirmed that the PTAB is not required to accept a patent owner’s arguments limiting claim scope as a prosecution history disclaimer when deciding the merits of an unpatentability challenge. Obviousness findings were supported by substantial evidence.


Plastipak Packaging, Inc. v. Premium Waters, Inc., 55 F.4th 1332, 2022 U.S.P.Q.2d 1238 (Fed. Cir. 2022). The Federal Circuit reversed and remanded the district court’s summary judgment order invalidating 12 Plastipak patents for failure to name a joint inventor under pre–America Invents Act 35 U.S.C. § 102(f). The district court granted summary judgment because Alessandro Falzoni, who was not named as an inventor on any of the 12 patents, (1) collaborated with the named inventors in arriving at the essential invention, and (2) disclosed a neck finish that included the claimed limitations, and thus had contributed significantly to the conception. The Federal Circuit reversed the district court in part due to competing evidence that the named inventors had independently conceived of their inventions. The Federal Circuit also reversed the district court because there was a genuine dispute as to whether Falzoni contributed anything other than what was already in the state of the art. Thus, the Federal Circuit reversed summary judgment and remanded for further proceedings.

Motion to Transfer

➤ In re Apple Inc., 52 F.4th 1360, 2022 U.S.P.Q.2d 1060 (Fed. Cir. 2022). The Federal Circuit found that the district court clearly abused its discretion in issuing its scheduling order. The Federal Circuit found that the “decision of a transfer motion must proceed expeditiously as the first order of business and that venue discovery must proceed immediately.” The venue must be decided prior to any other proceedings on the merits.


Uniloc USA, Inc. v. Motorola Mobility LLC, 52 F.4th 1340, 2022 U.S.P.Q.2d 1049 (Fed. Cir. 2022). The Federal Circuit affirmed the district court’s finding that the patentee lacked standing due to a license issued by the patentee to a third party based on collateral estoppel. The Federal Circuit found that the patentee was estopped because in a prior case relating to the same patent, a district court found that the patentee lacked standing. After the appeal was filed, the patentee and alleged infringer jointly moved to voluntarily dismiss the case but did not request that the Federal Circuit vacate the district court’s decision.

Uniloc 2017 LLC v. Google LLC, 52 F.4th 1352, 2022 U.S.P.Q.2d 1048 (Fed. Cir. 2022). The Federal Circuit reversed and remanded the district court’s decision to grant the motion to dismiss. The issue in this case was whether a termination of the patentee’s license to a third party eliminated the patentee’s standing to sue. The Federal Circuit found that the term “irrevocable” did not mean the license could not be terminated by mutual agreement of the parties.

Summary Judgment

Treehouse Avatar LLC v. Valve Corp., 54 F.4th 709, 2022 U.S.P.Q.2d 1150 (Fed. Cir. 2022). The Federal Circuit affirmed the district court’s summary judgment of noninfringement and its striking of expert testimony. The Federal Circuit found that when the district court adopted a construction that the parties requested and agreed upon, any expert theory that did not rely on that agreed-upon construction was suspect. Treehouse failed to demonstrate that the district court abused its discretion by striking portions of its expert’s report that did not rely on the claim construction agreed to by the parties. And because Treehouse failed to present evidence beyond that report that created a genuine issue of material fact regarding infringement, the Federal Circuit affirmed the summary judgment.

Trade Secrets

Sufficiency of Evidence

Howmedica Osteonics Corp. v. Howard, No. 19-19254, 2022 WL 16362464, 2022 U.S. Dist. LEXIS 196746 (D.N.J. Oct. 28, 2022). The existence of a trade secret is a question of fact. The question of whether certain information constitutes a trade secret ordinarily is best resolved by a fact finder after full presentation of evidence from each side. The district court noted that the defendants also argued that the plaintiff had not established that the defendants misappropriated the purported trade secrets. Given that several genuine disputes existed as to the existence of protectable trade secrets, the district court did not need to address whether the defendants did or did not misappropriate those purported trade secrets. The motion for summary judgment was denied.

ImageTrend, Inc. v. Locality Media, Inc., No. 22-cv-0254, 2022 WL 17128009, 2022 U.S. Dist. LEXIS 211741 (D. Minn. Nov. 22, 2022). ImageTrend did not identify any trade secret information with sufficient specificity. Although the amended complaint included numerous references to broad categories of allegedly “highly sensitive confidential information” or “proprietary” information, such generalized references by themselves were insufficient to plausibly allege that these categories of information were trade secrets. When a complaint pleads facts that are merely consistent with a defendant’s liability, it stops short of the line between possibility and plausibility of entitlement to relief. Here, ImageTrend’s allegations were merely consistent with the possibility that the allegedly stolen information might contain trade secrets. The motion to dismiss was granted.

Misson v. Robles, No. 22-cv-01744-AGT, 2022 WL 17225938, 2022 U.S. Dist. LEXIS 213139 (N.D. Cal. Nov. 25, 2022). If an individual discloses a trade secret to others who are under no obligation to protect the confidentiality of the information, or otherwise publicly discloses the secret, the property right is extinguished. The plaintiffs failed to plausibly plead that they took reasonable measures to protect the secrecy of their claimed trade secret. The complaint was devoid of any factual allegations suggesting that the defendant owed the plaintiffs a duty of confidentiality or otherwise understood and agreed to keep the inspection report confidential. The motion to dismiss was granted.



➤ Kimberley Kampers IP Pty Ltd v. Safiery Pty Ltd, Cancellation No. 92074422, 2022 WL 16708341, 2022 U.S.P.Q.2d 1036 (T.T.A.B. Nov. 2, 2022). Safiery filed a petition to cancel Kampers’ registration for the mark KIMBERLEY KAMPERS for campers on grounds of abandonment, fraud, and nonownership. Kampers moved for summary judgment.

The Trademark Trial and Appeal Board (TTAB) denied Safiery’s motion on its claim of nonownership of the mark, stating that there was a presumption of ownership by virtue of Kampers’ registration. The TTAB also denied the summary judgment motion on the claim of abandonment, noting that the period of three consecutive years of nonuse that creates a prima facie case of abandonment begins on the filing date of the section 1(a) application, and here that period had not yet run. As such, Safiery failed to prove that there was no genuine dispute of material fact as to its abandonment claim. Nonetheless, the TTAB found that the parties’ briefs and submissions raised a question of Kampers’ nonuse, and that the allegations in Safiery’s pleading of abandonment were sufficient to put Kampers on notice of the nonuse allegation. Thus, the TTAB ordered the parties to brief and submit evidence on the issue of nonuse, to be considered as a basis for summary judgment.

False Suggestion/Consent to Registration

Mystery Ranch, Ltd. v. Terminal Moraine Inc., Opposition No. 91250565, 2022 WL 17369425, 2022 U.S.P.Q.2d 1151 (T.T.A.B. Nov. 30, 2022). The opposer, Mystery Ranch, filed an opposition against a pending application owned by the applicant, Terminal Moraine, for DANA DESIGN for various goods in classes 18 and 22, including backpacks and camping and hiking goods, on the basis of section 2(a) of the Trademark Act for false suggestion of a connection with Dana Gleason, co-owner of the opposer. The opposer also claimed that “Dana” identified Gleason, who did not grant consent to registration of DANA DESIGN, under section 2(c) of the Trademark Act.

Gleason founded Dana Design Ltd., which sold high-quality backpacks and camping gear. Dana Design Ltd. owned trademark registrations for DANA DESIGN and a design mark, both of which were eventually assigned to other corporations. Both marks were canceled in 2016 and 2018. The applicant, having filed the application for DANA DESIGN in 2018, alleged that the opposer had abandoned its marks. After considering the evidence of record, the TTAB found that the opposer had shown that public awareness of Gleason and his connection to the backpacking field continued into the present, and that Gleason had not abandoned his “persona.”

Turning to the claim of false suggestion of a connection, the TTAB considered the first element—whether DANA DESIGN was the opposer’s name or identity, or a close approximation thereof. The TTAB found that based on the evidence of record, even though consumers associated Gleason with Mystery Ranch, the two were not perceived as each other’s alter ego. Moreover, the word “Dana” in DANA DESIGN did not refer interchangeably to either entity, and despite the opposer’s efforts to link Gleason and Mystery Ranch, such efforts did not establish “Dana” as the name or identity of Mystery Ranch. Accordingly, the section 2(a) claim was dismissed.

Considering the section 2(c) claim alleging a lack of consent to register by Gleason, the TTAB found that the record established that Gleason was sufficiently associated with backpacks and hiking gear such that consumers would recognize DANA DESIGN as identifying Gleason. Because Gleason’s consent was not provided, registration of DANA DESIGN was not permitted under section 2(c), and the opposition was sustained.

Likelihood of Confusion/Famous Mark

➤ DC Comics v. Cellular Nerd LLC, Opposition No. 91246950, 2022 WL 17832492, 2022 U.S.P.Q.2d 1249 (T.T.A.B. Dec. 20, 2022). The applicant, Cellular Nerd, sought registration of a word and design trademark, including CN CELLULARNERD.COM and a superhero with “CN” in the center of his chest, for installation, maintenance, and repair of cell phone–related hardware (CN application). The opposer, DC Comics, opposed the CN application on the basis of a likelihood of confusion under section 2(d) and dilution under section 43(c). DC Comics owns the letter “S” and shield design marks, and the appearance of Superman/Clark Kent pulling apart his shirt to reveal the Superman “S.” During examination of the CN application, the applicant argued that its mark called to mind Clark Kent transforming into Superman.

Upon consideration of the evidence of record, the TTAB found that the opposer’s “S” shield design marks were inherently and commercially strong, and accordingly such marks were entitled to a broad scope of protection. Moreover, the opposer’s “S” shield design marks had been licensed for a wide variety of merchandising products, including cell phone products and accessories. Additionally, the TTAB noted that the Superman character represented one of the most successful licensing brands in the United States.

However, the TTAB found that the opposer failed to provide persuasive evidence that the applicant’s cell phone–related services were similar and related to the opposer’s goods and services. Moreover, while the applicant offered its services from mobile units and some retail locations, and the opposer offered its goods and services online and through various retail locations, the opposer had failed to offer evidence or testimony showing overlap between the respective channels of trade. Additionally, the CN mark was dominated by the CELLULARNERD.COM wording, and as such, consumers would easily distinguish the applicant’s mark from the opposer’s “S” shield design marks. “Because Applicant’s mark conveys the image of a tech-savvy, problem-solving nerd with a vastly different set of skills than Opposer’s superhero, consumers will not view the marks in their entireties as sufficiently similar to cause them to mistakenly believe there is an association with Opposer.” Accordingly, the section 2(d) claim for likelihood of confusion was dismissed.

On the dilution by blurring claim, the TTAB found that the evidence of record did not establish that the applicant intended to create an association with the opposer’s “S” shield design marks. Moreover, similar to the likelihood of confusion analysis, the applicant’s CN application and the opposer’s “S” shield design marks were not similar enough for purposes of dilution. Accordingly, the section 43(c) claim of dilution by blurring was dismissed.

Translation Statement

In re Advanced New Technologies Co., Ltd., Application Serial No. 86832288, 2023 WL 181172, 2023 U.S.P.Q.2d 60 (T.T.A.B. Jan. 12, 2023). Advanced New Technologies sought registration of its ZHIMA mark for a variety of goods and services in a variety of international classes. The examining attorney refused registration because Advanced refused to submit a translation of ZHIMA, as required by Trademark Rule 2.32(a)(9). Advanced argued that, although “zhima” is a transliteration of the Chinese characters for the word “sesame,” the word ZHIMA itself was coined without any meaning.

The original applicant was Alibaba Holding Group, which later assigned the mark and application to Advanced. The TTAB noted that in the story “Ali Baba and the Forty Thieves,” the woodcutter entered the thieves’ secret den by saying the words “open sesame.” In addition, in its copending application for Chinese characters, Advanced entered a disclaimer stating that the mark Chinese characters translated to “‘ZHIMA’ and this means ‘SESAME’ in English.” Advanced’s website also advertised sesame powder as “Zhima Powder.” In addition, the examining attorney provided information from various Chinese dictionaries and news articles that “zhi ma” or “zhima” means “sesame” in English. The applicant, on the other hand, argued that it would be incorrect to state that “zhima means sesame” because the pronunciation “zhima” could be for numerous Chinese characters that taken together do not mean “sesame.”

The TTAB found that the evidence as a whole established that ZHIMA is a transliteration of a Chinese word that means “sesame.” Therefore, in view of Advanced’s refusal to comply with the requirement to enter a translation statement, the TTAB affirmed the refusal to register the ZHIMA mark.

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John C. Gatz

Nixon Peabody LLP

John C. Gatz is a member of the firm Nixon Peabody LLP in Chicago, Illinois.

Column contributors include the following writers: Copyrights: Jenni Psihoules, Nixon Peabody LLP; and Mark R. Anderson, Actuate Law LLC. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter and Andrew M. McCoy, Faegre Drinker Biddle & Reath LLP; Robert W. (Bill) Mason, Southwest Research Institute; and Angelo Christopher, Nixon Peabody LLP. Trade Secrets: R. Mark Halligan, FisherBroyles LLP. Trademarks: Elizabeth W. Baio, Nixon Peabody LLP; and Amy L. Sierocki, Blumenfield & Shereff LLP.