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Patent Protection Prevails: CAFC Limits the Use of Prior Art to Invalidate Patents

by | Jun 9, 2023

On May 9, 2023, in a significant reversal of a previous Patent Trial and Appeal Board (PTAB) decision, the Court of Appeals for the Federal Circuit (CAFC) ruled in favor of pharmaceutical giant Sanofi-Aventis Deutschland GmbH (“Sanofi”), upholding the validity of its patent (i.e., U.S. Patent No. RE47,614) for a drug delivery device and methods of using the same.

The dispute first arose when Mylan Pharmaceuticals Inc. (“Mylan”) initiated an inter partes review (IPR) of Sanofi’s ‘614 patent, alleging all 18 claims of Sanofi’s patent were obvious. In support of its petition, Mylan claimed that several references—namely, Burren (U.S. Patent Application No. 2007/0021718), Venezia (U.S. Patent No. 2,882,901), and de Gennes (U.S. Patent No. 4,144,957)—taught the ‘614 Patent to one skilled in the art. Despite Sanofi arguing that these references were unrelated to its patent, the PTAB concluded the ’614 patent was invalid using the “analogous art test,” which allows for the consideration of inventions from similar, but not identical, fields as a basis to claim a patent is invalid.

In ruling for Sanofi on appeal, however, the CAFC found that the applicability of the analogous art test—which serves the purpose of examining “whether a reference can be considered as prior art to the challenged patent in the first place”—was limited, as Mylan “adopted [a] problem statement derived from Burren and then worked backward to relate that problem to the ‘614 patent.” Furthermore, the CAFC reasoned that in evaluating “whether a reference is analogous, [the court] consistently held that a patent challenger must compare the reference to the challenged patent.” (emphasis added). As such, the CAFC agreed with Sanofi that the burden of proof to prove the claims’ unpatentability impermissibly shifted from Mylan to Sanofi, and ruled Mylan did not meet the requisite burden to connect de Gennes to the ‘614 patent such that a finding of invalidation would be proper. Accordingly, the CAFC reversed the PTAB’s decision to invalidate the ‘614 patent.

The case is Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc. (Case No. 21-1981) in the United States Court of Appeals for the Federal Circuit. The decision can be found at the following link: https://cafc.uscourts.gov/opinions-orders/21-1981.OPINION.5-9-2023_2123775.pdf

Miami Heat Star Player Jimmy Butler Files Several Trademark Applications Amid the NBA Finals and Eastern Conference Finals

by | Jun 8, 2023

The National Basketball Association (NBA) Finals and Eastern Conference Finals have not stopped the Miami Heat’s 2023 MVP and fan favorite, Jimmy Butler, from adding to his trademark portfolio.

Through applicant ZS Endorsement, LLC on May 24, 2023 — between Games 4 and 5 of the Heat’s battle against the Boston Celtics to reach the NBA Finals — Butler filed intent-to-use Application Serial No. 98/010,313 for “HIMMY BUCKETS” in connection with various goods, including athletic apparel, drinkware, beer, and non-alcoholic beverages such as coffee, tea, soda, and seltzer water.

One week later, on the eve of Game 1 of the NBA Finals against the Denver Nuggets, Butler filed several more intent-to-use trademark applications aimed to protect his well-known nicknames. These new applications include Serial No. 98/022,214 for “PLAYOFF JIMMY,” Serial No. 98/022,285 for “HIMOTHY BUTLER,” and Serial No. 98/022,234 for “HIMMY BUTLER,” all in connection with the same athletic apparel, drinkware, beer, and non-alcoholic beverage goods listed above. Notably, Butler’s portfolio also includes Application No. 90/664,531 for “JIMMY BUCKETS” for athletic apparel and drinkware, which was allowed by the U.S. Patent and Trademark Office (USPTO) in 2021. These filings indicate that the Miami Heat star is likely planning to launch his own athletic clothing and beverage lines.

Butler currently has a total of twenty-four (24) active applications pending before the USPTO via ZS Endorsement, LLC. Many of these applications relate to his “BIG FACE” coffee brand, which Butler reportedly conceptualized during the pandemic while in the 2020 NBA Bubble.

USPTO Record for Application Serial No. 98/022,234 for “HIMMY BUTLER,” owned by ZS Endorsement, LLC

Striking a Chord: TTAB Rules Guitar-Shaped Hotel Trade Dress is Inherently Distinctive

by | Jun 7, 2023

On May 25, 2023, the Trademark Trial and Appeal Board (TTAB) reversed a refusal to register the Seminole Tribe of Florida’s (the “Tribe’s”) trade dress consisting of “a three-dimensional building in the shape of a guitar” (U.S. Application No. 87/890,892)—finding the trade dress to be “inherently distinctive” for casino services, hotel services, restaurant services, and bar services.

In ruling the trade dress was inherently distinctive for such services, the TTAB opined that although the examining attorney deemed the Tribe’s trade dress to be “nondistinctive [and] ambiguous” such that “acquired distinctiveness [would be] required before registration can be granted”—similar to that of Wal-Mart Stores, Inc. v. Samara Bros., Inc., 54 USPQ2d 1065 (2000)—the Tribe’s trade dress is “not a common design . . . is unique, and [is] not a mere refinement of a commonly-adopted and well-known form of ornamentation for” the aforementioned casino services, hotel services, restaurant services, and bar services. As such, the TTAB reasoned that under “the guidance of Two Pesos, Samara Bros., and In re Chippendales USA,” the Tribe’s trade dress is “’tertium quid’ that is akin to product packaging”—illustrating the trade dress as “of such a design that a buyer will immediately rely on it to differentiate the product from those competing manufacturers . . . .” Therefore, the TTAB reversed the refusal to register the Tribe’s trade dress, allowing the application to proceed to registration and obviating the need to rely on the Tribe’s previously-accepted claim of acquired distinctiveness under 15 U.S.C. § 1052(f).

The case is In re Seminole Tribe of Florida, 2023 USPQ2d 631 (TTAB 2023). The image above is provided in the TTAB’s Opinion, which can be found at the following link: https://ttabvue.uspto.gov/ttabvue/ttabvue-87890892-EXA-23.pdf.

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