Motion to amend, swearing behind, and motion for additional discovery are a few of the topics covered in Banner Witcoff’s latest installment of PTAB Highlights.

Discretionary Denial. Split panel exercised its discretion to deny the petition due to the advanced stage of the parallel district court proceeding. Factors weighing in favor of denial included: the deadline for a final written decision was six months after trial was scheduled to begin, pre-trial invalidity contentions based on the same prior art and obviousness grounds had been filed, and pre-trial claim construction briefing and hearing that addressed the same claim construction issues was complete.

Cisco Systems, Inc. v. Ramot at Tel Aviv University Ltd., Nos. 2020-00122 and -00123, Papers 15 and 14 (May 15, 2020) (Repko, joined by Ullagaddi; Crumbley, dissenting)

Motion for Additional Discovery. Panel granted the patent owner’s motion seeking additional discovery related to secondary indicia of nonobviousness, specifically commercial success and copying. Factors warranting additional discovery included: the requested documents were already available in the parallel district court proceeding and concerns about confidentiality could be easily addressed using the board’s procedures for filing motions to seal and protective orders.

Quanery Systems, Inc. v. Velodyne LiDAR, Inc., Nos. 2018-00255-00256, Papers 62 and 66 (May 21, 2020) (Defranco, joined by Pinkerton and Woods)

Incorporation by Reference. Patent owner’s voluminous citations to 150 paragraphs of its expert’s declaration to support its arguments of a presumption of nexus between the challenged claims and its objective evidence of nonobviousness were not an improper incorporation by reference because of the necessity for its expert to conduct a detailed analysis of how the challenged claims compared to the patent owner’s products.

Intel Corp. v. Tela Innovations, Inc., Nos., 2019-01520, -01521, -01522, Paper 24 (May 18, 2020) (Kokoski, Kalan, and Derrick)

Swearing Behind.  Panel found challenged claims unpatentable based on  § 102(e) prior art after determining the patent owner’s evidence of earlier conception and reduction to practice was not persuasive.    

Fidelity Information Services, LLC v. Groove Digital, Inc., No. 2019-00050, Paper 65 (April 30, 2020) (public version available May 27, 2020) (Moore, Beamer, and Margolies)

Secondary Considerations. Panel found challenged claims unpatentable under § 103(a) and rejected the patent owner’s argument that secondary considerations demonstrated nonobviousness because the patent owner failed to provide specific, persuasive evidence of long-felt need beyond a conclusory statement that the invention fulfilled a long-felt need in the oncology community.

Foundation Medicine, Inc. v. Caris MPI, Inc., No. 2019-00164, Paper 55 (May 28, 2020) (Paulraj, Sawert, and Cotta)

Motion to Amend. Panel’s preliminary guidance on the patent owner’s motion to amend indicated the proposed substitute claims were reasonably likely to respond to a ground of unpatentability and were not unpatentable under § 112, but that it was reasonably likely the proposed substitute claims added new subject matter and were likely to be found unpatentable under § 103. 

Renesas Electronics Corp. v. Broadcom Corp., No. 2019-01040, Paper 19 (May 29, 2020) (Beamer, Boucher, and Giannetti)


As a leader in post-issuance proceedings, Banner Witcoff is committed to staying on top of the latest developments at the Patent Trial and Appeal Board (PTAB). This post is part of our PTAB Highlights series, a regular summary of recent PTAB decisions designed to keep you up-to-date and informed of rulings affecting this constantly evolving area of the law.

Banner Witcoff is recognized as one of the best performing and most active law firms representing clients in inter partes review (IPR) proceedings. To learn more about our team of seasoned attorneys and their capabilities and experience in this space, click here.

Banner Witcoff’s PTAB Highlights are provided as information of general interest. They are not intended to offer legal advice nor do they create an attorney-client relationship.  

Banner Witcoff attorneys Aseet Patel and Y. Michelle Zhang examined the U.S. Patent and Trademark Office’s (USPTO) new licensing marketplace, “Patents 4 Partnerships” (P4P), for an article published in IPWatchdog.

The USPTO launched P4P on May 4 to bring together those who have technologies and want to make them available for licensing. Although the platform currently focuses on COVID-19 related techonologies, Aseet and Michelle’s article discusses the potential for and benefits of expanding it to include other technologies.

“Assuming this evolution comes to fruition, the P4P platform will provide company executives, university technology transfer offices (TTOs), research institutions, and inventors/startups that have limited resources a valuable tool to match their technologies with interested buyers and licensees,” they wrote in their article.

The June 2 article, “Examining the USPTO’s Patents 4 Partnerships Platform,” can be viewed on IPWatchdog‘s website.

By Evi T. Christou and Anna L. King

On May 14, the U.S. Supreme Court unanimously decided in Lucky Brand Dungarees v. Marcel Fashions Group, No. 18-1086, 590 U.S. ___ (2020), that principles of federal claim preclusion do not prevent a party from asserting a settlement agreement as a defense against trademark infringement merely because it was not raised in an earlier suit between the parties.  In so holding, the Court resolved a circuit split on the issue of when (if ever) claim preclusion applies to defenses in a later suit.

Background

The nearly 20-year trademark dispute between Florida-based clothes wholesaler Marcel Fashion Group, Inc. (“Marcel”) and denim company Lucky Brand Dungarees, Inc. (“Lucky Brand”) started when Marcel sued Lucky Brand for violating its “Get Lucky” trademark.  In 2003, the parties settled the case, whereby Lucky Brand agreed to stop using the “Get Lucky” trademark, and Marcel agreed to dismiss the case and also release certain trademark claims it might have against Lucky Brand in the future.[1]

The parties were back in court when, in 2005, Lucky Brand sued Marcel alleging that Marcel and Marcel’s licensee used the “Get Lucky” trademark in a way that resembled Lucky Brand’s logos and designs.  Marcel counterclaimed, alleging that Lucky Brand continued to use the “Get Lucky” trademark in violation of the 2003 settlement agreement.  Lucky Brand moved to dismiss the counterclaims citing the settlement agreement release terms.  Denying Lucky Brand’s motion, the district court instead enjoined it from using the “Get Lucky” trademark and Lucky Brand never again raised the release defense again in the case. 

In 2011, Marcel again sued Lucky Brand, this time focusing on Lucky Brand’s use of marks other than “Get Lucky,” but that still contained the word “Lucky.” Lucky Brand moved to dismiss, again pointing to Marcel’s 2003 release.  Marcel countered that Lucky Brand could not invoke the release defense because Lucky Brand could have pursued the release defense in the 2005 action but did not do so.  The district court granted Lucky Brand’s motion to dismiss, but on appeal, the U.S. Court of Appeals for the Second Circuit vacated and remanded, concluding that Lucky Brand was precluded from raising the defense because it could and should have raised the defense in the 2005 action under “defense preclusion.”

Discussion

Before this case, the Supreme Court had never explicitly recognized “defense preclusion” as an independent category of preclusion separate and apart from the general doctrines of issue and claim preclusion.  The parties agreed that issue preclusion — which precludes a party from relitigating an issue actually decided in a prior case — did not apply, so the Court’s opinion, authored by Justice Sonia Sotomayor, focused on whether a defense can be barred under claim preclusion.  Claim preclusion requires that the prior action was (i) adjudicated on the merits, (ii) involved the same adverse parties and (iii) that the asserted claims were or could have been raised in the prior action.  The issue before the Court pertained to the third element of the test, namely, whether Lucky Brand’s failure to raise the release defense in the 2005 action precluded it from raising it in the 2011 action. 

The Court reversed the Second Circuit’s decision and held that claim preclusion did not, and could not, bar Lucky Brand from asserting its settlement agreement defense in the 2011 action because the 2005 and 2011 actions “involved different marks, different legal theories, and different conduct—occurring at different times.”  Slip Opinion, at 10.  The trademarks differed because the 2005 action involved Lucky Brand’s use of the “Get Lucky” mark while the 2011 action involved different “Lucky” marks.   The type and timing of conduct between the two suits also differed in that Lucky Brand’s allegedly infringing conduct in the 2011 action occurred after the 2005 action concluded.  As the Supreme Court noted, claim preclusion does not generally preclude claims that are predicated on events that postdate the filing of the initial complaint because subsequent events create a new claim to relief.

Key Takeaways

While the Court’s decision on defense preclusion applies to all types of civil cases, it has particular significance in trademark cases “where the enforceability of a mark and likelihood of confusion between the marks often turns on extrinsic facts that change over time.”  Slip. Op., at 9. 

For example, descriptive marks may acquire trademark protection by gaining secondary meaning through marketplace use over time or once distinctive marks may become generic through common use over time.  While the strength of a plaintiff’s mark may “wax and wane” due to changes in consumer recognition, the similarity of the marks may also change due to marketplace conditions and the context in which the marks are found.  This implicates a host of likelihood of confusion factors, including changes in the relative similarity of marks over time and the presence of other branding, the expansion or contraction of trade channels or product lines, instances of actual confusion, the sophistication level of consumers, and changes in the quality of products.  Petitioner’s Brief, at 44. 

The Court’s decision also highlights the importance of carefully drafting releases in settlement agreements, especially between parties with contentious and longstanding trademark disputes. 


For more information about the content in this alert or if you have questions about the implications of the Court’s decision, please contact a Banner Witcoff attorney.

Banner Witcoff is ranked as a top trademark firm and a number of our attorneys are recognized as leading practitioners in trademark law. To learn more about our team of seasoned attorneys and their capabilities and experience, click here.


[1] The release provided that: “Marcel hereby forever and fully remises, releases, … and discharges [Lucky] from any and all actions, causes of action … claims, demands or other liability or relief of any nature whatsoever, whether known or unknown, foreseen or unforeseen, … that Marcel ever had, now has or hereafter can, shall or may have, by reason of or arising out of any matter, cause or event occurring on or prior to the date hereof, including but not limited to … any and all claims arising out of or in any way relating to [Lucky’s] rights to use, license and/or register the trademark LUCKY BRAND and/or any other trademarks, trade names, brands, advertising slogans or tag lines owned registered and/or used by [Lucky] in the United States and/or in any foreign country as of the date of this Agreement. ” Petitioner’s Brief at 7-8.

Here are takeaways from recent decisions of interest relating to PTAB proceedings:

Motion to Amend.  In a case in which the PTAB’s pilot program for motions to amend practice and procedure was applied, a contingent motion to amend was granted as to the claim reached.  Notably, this result favorable to the patent owner was obtained after the Board initially expressed patentability concerns over the amended claim in its Preliminary Guidance.  The patent owner’s reply to the petitioner’s opposition to the motion to amend “overcame the patentability concerns expressed in the Preliminary Guidance.”  
Koa Corp. v. Vishay Dale Electronics, LLC, IPR2019-00201, Paper 30 (May 7, 2020) (Droesch, joined by Kaiser and Hagy).

Discretionary Petition Denial. An IPR petition was discretionarily denied under 35 U.S.C. § 314(a) in view of the late stage of parallel district court litigation. Citing to its prior decision in NHK Spring Co., Ltd. v. Intri-Plex Tech., Inc., IPR2018-00752, Paper 8 (Sept. 12, 2018) (precedential), the Board referenced as key factors leading to its decision: that the trial date set was substantially before (more than seven months) the Board would issue a final written decision; both the parties and the court having invested substantial time and resources, including in connection with discovery (fact discovery closed) and claim construction; the similarity of evidence and grounds of invalidity asserted in the petition and in the district court litigation; and the overlap of claims at issue in the two proceedings. 
Vizio, Inc. v. Polaris PowerLED Technologies, LLC, IPR2020-00043, Paper 30 (May 4, 2020) (Szpondowski, joined by Kauffman and Deshpande)

Discretionary Petition Denial. An IPR petition was discretionarily denied under 35 U.S.C. § 314(a) in view of the late stage of parallel district court litigation.  The Board cited to Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 at 5 (March 20, 2020) (precedential) as support for balancing the following non-exclusive factors pursuant to its precedential NHK decision: (1) whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; (2) proximity of the court’s trial date  to the Board’s projected statutory deadline for a final written decision; (3) investment in the parallel proceeding by the court and the parties; (4) overlap between issues raised in the petition and in the parallel proceeding; (5) whether the petitioner and the defendant in the parallel proceeding are the same party; and (6) other circumstances that impact the Board’s exercise of discretion, including the merits. Addressing each factor in turn, the Board determined that “[o]n balance, based on the facts presented, particularly the advanced stage of the [] litigation, a currently scheduled trial date approximately seven months before the would-be deadline for a final written decision, and the overlap between the issues presented there and in the Petition, we find that it would be an inefficient use of the Board, party and judicial resources to institute the present proceeding.” 
Intel Corp. v. VLSI Technology LLC, IPR2020-00106, Paper 17 (May 5, 2020) (Gerstenblith, joined by Dang and McGraw). 

No Discretionary Petition Denial for Concurrent District Court Litigation.  Where concurrent district court litigation between the same parties had not set a date for trial and had not decided Markman issues, the Board declined to exercise discretion to deny the petition under 35 U.S.C. § 314(a).
Church & Dwight Co., Inc. v. Randall Batinkoff, IPR2020-00168, Paper 11 (May 15, 2020) (Marschall, joined by Brown and Weatherly).

No Impermissible Hindsight. In denying patent owner’s request for rehearing of a final written decision, the PTAB found no improper hindsight where the Board highlighted reasons, advanced by the petitioner, for combining prior art teachings—the PTAB further noting that improper hindsight is inferred when the principle underlying a POSITA’s motivation to make the proposed combination has not been explained.
Wirtgen America, Inc. et al v. Caterpillar Paving Products, Inc., IPR2018-01201, Paper 34 (May 11, 2020) (Browne, joined by Mayberry and Marschall).

Failure to Teach Successful Result of Combination. IPR institution denied where petitioner failed to show the prior art combination similar to the patented composition would also demonstrate the claimed chemical stability.
Reckitt Benckiser LLC v. GEMAK Trust, IPR2020-00186, Paper 8 (May 15, 2020) (Abraham, joined by Kaiser and Derrick).


As a leader in post-issuance proceedings, Banner Witcoff is committed to staying on top of the latest developments at the Patent Trial and Appeal Board (PTAB). This post is part of our PTAB Highlights series, a regular summary of recent PTAB decisions designed to keep you up-to-date and informed of rulings affecting this constantly evolving area of the law.

Banner Witcoff is recognized as one of the best performing and most active law firms representing clients in inter partes review (IPR) proceedings. To learn more about our team of seasoned attorneys and their capabilities and experience in this space, click here.

Banner Witcoff’s PTAB Highlights are provided as information of general interest. They are not intended to offer legal advice nor do they create an attorney-client relationship.  

As part of the firm’s sponsorship of the 2020 AlphaLab Gear Hardware Cup, Banner Witcoff has awarded Inductive Intelligence free legal services for the preparation and filing of a U.S. patent application.

The Hardware Cup is an international pitch competition for early-stage hardware startups. Regional competitions began in February and culminated in the virtual international finals on May 19, when JuneBrain was announced as the winner of the competition and $50,000 grand prize.

After evaluating the finalists’ product pitches, Banner Witcoff selected Inductive Intelligence as the winner of the firm’s free patent application. During the competition, Inductive Intelligence pitched its smart inductive heating system for single serve food and beverages that also doubles as a phone charger.

“Common themes across all finalists were strong pitches, innovative products, and creative solutions to a wide range of problems. It was a difficult decision, but ultimately Inductive Intelligence stood out to us because of their impressive team, partners, and product,” said Banner Witcoff attorney Justin Philpott. “Quite frankly, I’d like to buy their product when it hits the market.”

Banner Witcoff is pleased to award a free patent application to help Inductive Intelligence create value with strategic IP.

“Each patent we file plays an integral role in establishing a network of patents to secure a broader market,” said Greg Clark, CEO of Inductive Intelligence. “In this case, that market is for fully automated or personalized heating and cooking, which is already on the way to being an absolutely enormous opportunity.”

Click here to learn more about Inductive Intelligence, here for information about the 2020 Hardware Cup, and here to read about Banner Witcoff’s IP capabilities.

Banner Witcoff attorney Ross Dannenberg was quoted in a May 7 Bloomberg Law article on a recent court ruling over copyright claims related to Jerry Seinfeld’s “Comedians in Cars Getting Coffee” series.

The claims, according to the article, came from former Seinfeld collaborator Christian Charles who alleged he owned copyrights to the show. The U.S. Court of Appeals for the Second Circuit ruled in Seinfeld’s favor, finding that Charles’ copyright claims were time-barred by the three-year window under the Copyright Act.

Ross told Bloomberg Law that the ruling provides a takeaway for prospective plaintiffs: “Don’t sit on your rights.”

The article, “Seinfeld’s Win in ‘Comedians in Cars’ Copyright Case Affirmed,” is available online to subscribers.

As a leader in post-issuance proceedings, Banner Witcoff is committed to staying on top of the latest developments at the Patent Trial and Appeal Board (PTAB). This post is part of our PTAB Highlights series, a regular summary of recent PTAB decisions designed to keep you up-to-date and informed of rulings affecting this constantly evolving area of the law.

Here are takeaways from recent decisions of interest relating to PTAB proceedings:

  • No denial under 35 U.S.C. § 325(d) where petitioner pointed out sufficiently how the examiner materially erred in evaluating the prior art reference.
    Roku, Inc. v. Universal Electronics Inc., IPR2019-01615, Paper 12 (April 17, 2020) (Fenick, joined by Boucher and Chung).
  • No denial under 35 U.S.C. § 314(a) where some claim limitations overlap with limitations of other related patents.
    Apple Inc. v. Omni MedSci, Inc., No. 2020-00029 (April 22, 2020) (McNamara, joined by Horvath and Fenick).
  • Institution of IPR granted after PTAB determined that petitioner did not present substantially the same arguments that were previously presented to the office where four of five references that form the basis of the asserted grounds were not previously presented.
    Square, Inc. v. 4361423 Canada Inc. d/b/a AnywhereCommerce, IPR2019-01649, Paper 11 (April 27, 2020) (Weinschenk, joined by Lee and Trock).
  • PTAB cites lack of authority to determine if a mistake is of minor character or occurred in good faith in granting motion to request a certificate of correction.
    Arkema Inc. et al v. Honeywell International, Inc., IPR2016-00012, Paper 57 (April 27, 2020) (Sawert, joined by Tierney and Obermann).
  • Institution of IPR denied because mistaken filing of a duplicate power of attorney instead of a petition is not a clerical error and does not constitute a petition filed before the one-year deadline imposed by 35 U.S.C. § 315(b).
    Varian Medical Systems, Inc. v. Best Medical International, Inc., IPR2020-00075, Paper 13 (May 1, 2020) (Easthom, joined by Saindon and Hudalla).

Banner Witcoff is routinely recognized as one of the best performing and most active law firms in inter partes review (IPR) proceedings. To learn more about our PTAB team of seasoned attorneys and their capabilities and experience in this space, click here.

Banner Witcoff’s marketing communications, including our PTAB Highlights, are provided as information of general interest. Our marketing communications are not intended to offer legal advice nor do they create an attorney-client relationship.

Managing Intellectual Property (MIP) recognized 17 Banner Witcoff attorneys in its 2020 edition of “IP Stars,” a guide to the world’s top intellectual property firms and practitioners.

MIP recognized the following Banner Witcoff attorneys as 2020 “IP Stars” in their respective geographic and practice areas:

Marc S. Cooperman, Ross A. Dannenberg, Michael J. Harris, John P. Iwanicki, Sarah A. Kagan, Robert S. Katz, Christopher L. McKee, Timothy C. Meece, Frederic M. Meeker, Helen Hill Minsker, Darrell G. Mottley, Joseph M. Potenza, Christopher J. Renk, Joseph M. Skerpon, Richard S. Stockton, J. Pieter van Es, and Bradley C. Wright.

The “IP Stars” rankings are based on information MIP’s analysts obtain from thousands of law firms, practitioners, and their clients through interviews, surveys, and other research.

Click here to view Banner Witcoff’s practitioner rankings.

By Brad Van Pelt

Data from the chief economist at United States Patent and Trademark Office (USPTO) indicates that examiners are rejecting fewer cases as being ineligible for patenting.  A recent report issued by the chief economist’s office highlights this trend, and other USPTO patent examination outcomes, following the U.S. Supreme Court’s 2014 decision in Alice Corp. v. CLS Bank International

Key findings from the report include:

  • § 101 rejections in first office actions in Alice-affected technologies: 
    • Increased by 31%, 18 months after Alice, but
  •  Variability across examiners in § 101 determinations in Alice-affected technologies:
    • Increased by 26%, 18 months after Alice, but
    • Decreased by 44%, 12 months after the 2019 PEG.

In June of 2014, the Supreme Court in Alice Corp. v. CLS Bank International significantly altered the law on patent eligibility.  The Court reviewed whether patent claims directed to a computer-implemented financial settlement system were eligible for patenting.  The Court held claims patent ineligible, reasoning generic computer implementation does not transform a patent-ineligible abstract idea into a patent-eligible invention. Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014). The Supreme Court’s decision significantly broadened the scope of ineligible subject matter and lead to much ambiguity into how the decision would be applied to technology involving “abstract ideas.”

In the 18 months following the Alice decision, the probability of receiving a rejection for patent-ineligible subject matter increased by 31%.  But the data in the report shows that after the issuance of examination guidance documents in April of 2018 and January of 2019, the probability of receiving an eligibility rejection decreased. The USPTO typically prepares examination guidance documents in order to adjust to major changes in the U.S. patent law. Such documents are designed to assist examiners in applying the law during examination. 

Figure 3 from the report, which is reproduced below, illustrates the trends in receiving a first office action containing patent ineligibility rejections for patent applications in Alice-affected technologies, and in other technologies, from 2017 through 2019.  The first vertical bar (dashed red line) marks the date of the April 2018 Berkheimer memorandum and the second vertical bar (solid red line) marks the date of the 2019 PEG. 

This report is helpful to applicants in deciding whether to file for patent protection on Alice-affected cases, including various forms of software.  For now, applicants have much needed clarity in outcomes in front of the USPTO and less chance of receiving ineligible subject matter rejections from the USPTO.  But the USPTO’s determinations and guidance are not binding on the Federal Circuit or the Supreme Court.   

By Victoria R. M. Webb and Zach Getzelman

MAY 20, 2020 UPDATE:

Since this article’s publication, federal courts around the country have continued to address the COVID-19 pandemic and to modify their procedures, including in intellectual property cases.

For example, as previously explained, the U.S. Supreme Court made the unprecedented move to hold May 2020 oral arguments by telephone.[i] The Court has now heard 10 cases over two weeks of telephonic oral arguments, including arguments in a trademark case.[ii] The Federal Circuit is also holding telephonic oral arguments and recently announced that telephonic oral arguments will continue “until further notice.”[iii]

Even trials are starting to take place remotely. For example, after the parties waived the jury in Centripetal Networks, Inc. v. Cisco Systems, Inc., the bench trial began via Zoom with the first day involving a remote technical tutorial.[iv] The judge stated that while he regularly limits parties’ time during patent trials, he would not in this case based on the novelty of the trial forum.[v] Relatedly, in IPA Technologies Inc. v. Amazon.com, Inc., the judge denied a request to postpone a Markman hearing and ordered that it be held via Skype for Business.[vi] In a non-IP dispute, a bench trial in Liquid Metal LLC v. Business Aircraft Leasing Inc. was broadcast on YouTube.[vii] The videos included various views of home offices (a bed, shelves, etc.), a barking dog, and technical issues such as participants trying to talk while being on mute, highlighting some of the challenges litigants face and need to be aware of when remotely participating.[viii]

Other courts have provided trial continuances but are simultaneously preparing for remote trials to begin soon. For example, despite initially denying a request for a continuation, the judge in MV3 Partners LLC v. Roku, Inc. granted a continuation of the jury trial until June 29 but described that new date as “unavoidable.”[ix] In another example, a judge agreed to a continuation of a bench trial date to July 6 but stated that “we should prepare for the possibility that some or all of the testimony at our trial will have to be taken remotely.”[x]

Since the article’s publication below, various courts have extended the ongoing procedural modifications, such as extending courthouse closures or access restrictions, or trials, hearings, and deadlines.[xi] One court—the District of Rhode Island—issued a letter “looking to the future” about how the court will operate “in the next year to 18 months” and previewing that many procedural changes are likely to remain.[xii] The Court explained that “some time and creative thinking” is necessary, and that “we cannot return the Court to what we will think of as fully ‘normal’ operations until it is completely safe to do so.”[xiii] The Court also provided some “preliminary decisions,” including keeping the courthouses closed “for at least the next several months, and likely until September,” suspending jury trials “until further notice,” and conducting most of the other “usual functions” of the Court “using either telephone or more likely Zoom video.”[xiv]

Similarly, individual judges are looking to the future and establishing new procedures for other litigation procedures. In a matter to watch, a judge in the Northern District of California rejected Roku’s motion for a protective order after Canon subpoenaed third-party Roku’s source code and wanted remote access of the source code.[xv] The judge denied the motion because the parties had failed to meet and confer in good faith, and reprimanded the parties: “At a time when the country and the world is facing a health crisis, the court expects counsel and the parties to make extra efforts to resolve discovery issues amicably.”[xvi] How this discovery dispute is resolved could create guidance for certain kinds of remote discovery, and others have been watching. For example, on May 13, Hulu filed an amicus brief arguing that remote viewing of source code is “inherently and incurably insecure” and if source code were to become public, it’s value would “irreparably be destroyed.”[xvii]

Once again, the COVID-19 crisis remains ongoing and the patchwork of various orders and guidance from federal courts continues to change rapidly. For additional information about the content in this alert or update, or if you have questions about the business and legal implications of the COVID-19 situation, please contact a Banner Witcoff attorney.


[i]  United States Supreme Court Apr, 13, 2020 Press Release, available at

https://www.supremecourt.gov/publicinfo/press/pressreleases/pr_04-13-20 (hearing May 2020 oral arguments by telephone for “a limited number of previously postponed cases”).

[ii] See, e.g., United States Supreme Court Argument Audio (Term Year 2019, Argument Session May 4 – May 13, 2020),  https://www.supremecourt.gov/oral_arguments/argument_audio/2019.

[iii] Notice Concerning the Conducting and Scheduling of Oral Argument (Fed. Cir. May 18, 2020), available at http://www.cafc.uscourts.gov/announcements/notice-concerning-conducting-and-scheduling-oral-argument; Administrative Order No. 20-02 (Fed. Cir. May 18, 2020), available at http://www.cafc.uscourts.gov/sites/default/files/rules-of-practice/Administrative-Orders/AdministrativeOrder-2020-02-05182020.pdf.

[iv] See “Cisco Patent Trial Kicks Off Over Zoom Without A Hitch,” available at https://www.law360.com/articles/1269331; see also Centripetal Networks, Inc. v. Cisco Sys., Inc., No. 2:18-cv-00094, Dkt. No. 294 (E.D. Va. Mar. 12, 2020) (parties agreeing to waive jury trial).

[v] Id.

[vi] IPA Techs. Inc. v. Amazon.com, Inc., No. 16-cv-01266, Dkt. No. 122 (D. Del. May 4, 2020).

[vii] See “18-726 – Liquid Metal LLC v. Business Aircraft Leasing, Inc. – Bench Trial,” available at https://www.youtube.com/watch?v=B2S7NtJA_xE (dated Apr. 28, 2020).

[viii] Id.

[ix] MV3 Partners LLC v. Roku, Inc., No. 18-cv-00308, Dkt. No. 271 (W.D. Tex. May 13, 2020).

[x] Ferring Pharm. Inc. v. Serenity Pharm., LLC, No. 17-cv-09922, Dkt. No. 684 (S.D.N.Y. May 14, 2020).

[xi] See, e.g., In re: Second Extension of Modified Court Opreations Under the Exigent Circumstances Created by COVID-19 and Related Coronavirus, Gen. Order No. 08-20 (W.D. Wash. May 13, 2020), available at http://www.laed.uscourts.gov/sites/default/files/pdfs/EDLA-GeneralOrder20-6ContinuingJuryTrialsuntilAug2020FINAL.pdf (entering a general order, e.g., continuing prior COVID-19 procedures until July 31, 2020, continuing civil hearings and trial dates before August 3, 2020 until further notice, requiring all persons over two years old to wear a face covering or mask inside courthouses).

[xii] April 29, 2020 Letter from District of Rhode Island, available at https://www.rid.uscourts.gov/sites/rid/files/Letter%20to%20the%20Bar%20%28003%29.pdf.

[xiii] Id.

[xiv] Id.

[xv] Canon Inc. v. TCL Elecs. Holdings Ltd., No. 20-MC-80079, Dkt. No. 12 (N.D. Cal. May 8, 2020).

[xvi] Id.

[xvii] Canon Inc. v. TCL Elecs. Holdings Ltd., No. 20-MC-80079, Dkt. No. 19 (N.D. Cal. May 8, 2020).

APRIL 29, 2020 ORIGINAL POST:

Over the past several weeks, courts, judges, and parties have been modifying the way intellectual property litigations move forward amid the COVID-19 / coronavirus pandemic. While cases are proceeding, flexibility remains key. Below we highlight a few examples of the current impact of the COVID-19 pandemic on intellectual property litigation. However, these are only exemplary, and because the situation is changing rapidly, it is important to consult the full orders, procedures, and opinions in your court and from your judge.

Court Orders and Procedures Related to COVID-19

U.S. federal courts have been modifying the way they operate in response to the pandemic, public health guidance, and various shelter-in-place orders. So far, each federal court has set its own operating procedures, often through standing or general orders. These orders can be found on each court’s individual website, and also are collected on the United States Courts’ website.[i]

Modifications impacting civil intellectual property cases have included one or more of the following: restricting access to courthouses and clerk’s offices; continuing trials; cancelling or postponing hearings or other events; permitting telephonic or videoconference attendance; and extending some or all deadlines for a period of time. However, each court’s approach has been unique.

For example, the U.S. Supreme Court closed to the public, postponed March and April oral arguments, and announced that it will hold May 2020 oral arguments remotely.[ii] Similarly, the Federal Circuit held April 2020 arguments by telephone and will do the same for May 2020 oral arguments.[iii] The Federal Circuit also adopted a variety of other temporary modifications to rules and procedures, such as suspending the filing of certain paper copies.[iv]

In fact, access to nearly every federal district and appellate courthouse has been restricted in some manner, but the approaches and time periods for restrictions are varied. For example, federal court buildings in the Western District of Michigan are “open to the public on an ‘appointment only’ basis until April 30, 2020.”[v] Other district courts are restricting access based on travel or health history.[vi] And, despite the pandemic, some courthouses appear to remain open without restrictions on building access. For example, as of this writing, the Southern District of Iowa does not appear to have any COVID-19 related restrictions on who can enter the courthouse buildings, although it has issued other orders related to the pandemic.[vii] So before traveling to a federal courthouse building, be sure to check with that individual courthouse on any new or additional restrictions in place due to the COVID-19 pandemic.

Most federal district courts also postponed jury trials, and in some cases, bench trials. But once again, the approaches differ. Some courts, like the Northern District of Alabama, continued both civil jury and bench trials until further notice or court order.[viii] Others, like the Northern District of Illinois, are treating bench and jury trials differently.[ix] Approaches can even vary amid district courts in the same state. For example, each federal district court in California postponed civil jury trials, but through different points in time in May and June 2020.[x]

Similarly, many federal district courts are approaching hearings and other in-person events in a variety of ways, including deciding on the papers[xi] or holding hearings by telephone or videoconference.[xii]

Filing, discovery, and other civil deadlines have largely remained intact in many courts.[xiii] However, a handful of courts have broadly extended or stayed those deadlines.[xiv] Others, like the District of Maryland, take a mixed approach, extending filing deadlines but allowing discovery activities to proceed.[xv] In most cases, however, the orders leave flexibility for individual judges to make exceptions.[xvi]

Although most states have some form of a statewide stay-at-home order, federal courts in states without such an order are still taking precautionary measures. For example, the District of North Dakota is closing federal courthouses to the public “except for scheduled appointments,” continuing jury trials for a period of time, and taking other actions in response to the pandemic.[xvii] 

The above is merely advisory, and most courts allow judges to modify the standing order procedures or parties to request additional relief. In addition, courts are issuing new and amended orders and guidance often. It is therefore important to consult the specific procedures, orders, and guidance from the court and judge in your particular case.

Decisions from IP Cases that Reference COVID-19

Judges in intellectual property cases are also adapting in real time and providing a range of responses to parties’ requests to extend deadlines. For example, in Saint Lawrence Communications v. Amazon.com, the court initially denied a joint motion for a 30-day continuance of all deadlines in a patent infringement case. No. 2:19-CV-00027, Dkt. No. 79 (E.D. Tex. Mar. 12, 2019). A week later, the court reversed course and granted the 30-day continuance of all deadlines after the parties renewed their joint motion. Saint Lawrence Communications v. Amazon.com, No. 2:19-CV-00027, Dkt. No. 81 (E.D. Tex. Mar. 19, 2019). In another example, a court granted a joint motion to extend all deadlines by 60 days in a patent infringement case. Tippmann Engineering, LLC v. Innovative Refrigeration Systems, Inc., No. 5:19-CV-00087, Dkt. No. 51 (W.D. Va. Apr. 2, 2020).

Alternatively, some courts have ordered parties to take certain actions telephonically. For example, rather than extend the deadline for a mediation in a patent infringement case, one court ordered the mediation to happen via videoconference within a week. Eidos Display, LLC v. Chi Mei Innolux Corp., No. 6:11-CV-00201, Dkt. No. 968 (E.D. Tex. Mar. 20, 2020). In another example, a court held that the deposition of an individual in a patent infringement case could be taken telephonically if the parties agreed, but held that any Rule 30(b)(6) depositions would be postponed indefinitely because properly preparing a Rule 30(b)(6) witness is impossible while the parties’ offices are closed and documents cannot be accessed. British Telecommunications PLC v. IAC/InterActiveCorp, No. 18-CV-366, Dkt. No. 188 (D. Del. Mar. 20, 2020).

Finally, when deciding whether to move the court, a party should keep in perspective the importance of its motion in the context of the COVID-19 pandemic. In Art Ask Agency v. The Individuals, the judge scolded the plaintiff for filing an emergency motion to reconsider the postponement of a hearing regarding a temporary restraining order in a trademark and copyright infringement case. Art Ask Agency v. The Individuals, No. 1:20-cv-01666, Dkt. No. 27 (N.D. Ill. Mar. 18, 2020). After pointing out that the plaintiff had failed to show any irreparable injury from waiting a few weeks, the judge stated, “[t]he world is facing a real emergency. Plaintiff is not.” Id.

Looking Forward

The COVID-19 crisis is ongoing and circumstances are changing rapidly. As are the orders and guidance issued by courts. For now, the following are some tips to keep in mind:

  • Continue to monitor your court’s orders, guidelines, and protocols. The guidelines are constantly changing as courts work to quickly adapt to new guidance. Check back often.
  • Monitor your judge’s decisions from other cases that relate to COVID-19 and its impact. As discussed above, many parties are filing papers related to scheduling and other impacts of the pandemic. Decisions from your specific judge may shed light on additional potential impacts in your own case.
  • E-file where possible. Given the number of stay-at-home orders and the restricted access to many courthouses, e-filing remains a great option. In addition, many courts are changing procedures for filing or eliminating the need for physical courtesy copies in the wake of the pandemic, so check your specific court’s or judge’s policy.
  • Be prepared to participate remotely, whether through telephonic or video means. Test your technology in advance, and have a back-up option in case your preferred method fails or cuts out. Also, consider how to handle client attendance or sidebars with your client while remote.
  • Be flexible and consider how to adapt arguments, presentations, and filings given the current circumstances and potential remote means. Presenting in person versus over the phone or even via video can require different types of presentations and formats.

The above information is advisory only, and the situation is rapidly changing. For additional information about the content in this alert or if you have questions about the business and legal implications of the COVID-19 situation, please contact a Banner Witcoff attorney.

Banner Witcoff is routinely recognized for its litigation practice. To learn more about our team of seasoned litigators and their capabilities and experience, click here.


[i] See “Court Orders and Updates During COVID-19 Pandemic,” available at https://www.uscourts.gov/about-federal-courts/court-website-links/court-orders-and-updates-during-covid19-pandemic (collection of court orders, protocols, and guidance from federal appellate and district courts).

[ii] United States Supreme Court Mar. 16, 2020 Press Release, available at https://www.supremecourt.gov/publicinfo/press/pressreleases/pr_03-16-20 (postponing March 2020 oral arguments); United States Supreme Court Apr. 3, 2020 Press Release, available at https://www.supremecourt.gov/publicinfo/press/pressreleases/pr_04-03-20 (postponing April 2020 oral arguments); United States Supreme Court Apr, 13, 2020 Press Release, available at

https://www.supremecourt.gov/publicinfo/press/pressreleases/pr_04-13-20 (hearing May 2020 oral arguments by telephone for “a limited number of previously postponed cases”).

[iii] Updated Public Advisory Concerning the Federal Circuit’s April 2020 Sitting (Fed. Cir. Mar. 18, 2020), available at

http://www.cafc.uscourts.gov/announcements/updated-public-advisory-concerning-federal-circuits-april-2020-sitting-march-18-2020 (holding April 2020 arguments by telephonic conference); Public Advisory Concerning the May 2020 Court Session (Fed. Cir.  Apr. 21, 2020), available at http://www.cafc.uscourts.gov/sites/default/files/announcements/2020/Notice-May2020CourtSession-04212020.pdf (holding May 2020 arguments telephonically).

[iv] Administrative Order No. 20-01, (Fed. Cir. Mar. 20, 2020), available at http://www.cafc.uscourts.gov/sites/default/files/rules-of-practice/Administrative-Orders/AdministrativeOrder-ModifiedOperations-03202020.pdf.

[v] Notice of Revised Access to Facilities Overseen by the United States District Court for the Western District of Michigan, available at https://www.miwd.uscourts.gov/news/covid-19-restrictions-federal-building-access-appointment-or-court-order-only-march-24-april-30.

[vi] See, e.g., In re: Restrictions on Visitors to Courthouses, No. 3-20-MC-21 (Dkt. No. 1) (N.D. W.Va. Mar. 10, 2020), available at https://www.wvnd.uscourts.gov/sites/wvnd/files/3%2020%20mc%2021%20Order%20re%20Restrictions%20on%20Visitors%20to%20Courthouses.pdf (prohibiting entry to any courthouse of certain individuals, e.g., persons who have traveled to, or reside with or have close contact with someone who has traveled to, China, South Korea, Japan, Italy, and Iran within the last 14 days; persons who have been asked to self-quarantine by a doctor, hospital, or health agency; persons who have been diagnosed with or have had contact with someone diagnosed with COVID-19; and persons with “fever, cough or shortness of breath”); In re: Visitor Restrictions, Order of the Chief Judge No. 17-A (S.D. Cal. Mar. 17, 2020), available at https://www.casd.uscourts.gov/_assets/pdf/rules/Order%20of%20the%20Chief%20Judge%2017-A.pdf (barring from entering federal court houses, e.g., persons “who have traveled to any countries within the last fourteen days for which the CDC has issued Level Three travel health notices,” or who reside with or have close contact with somebody who traveled to those countries within the last 14 days; persons “who have travelled to a quarantined area in the United States within the last fourteen days;” persons who have been asked to self-quarantine, who have been diagnosed with or have had contact with somebody diagnosed with COVID-19, or who have “apparent symptoms of COVID-19, such as fever, severe cough, or shortness of breath”).

[vii] See generally https://www.iasd.uscourts.gov/.

[viii] In re: Court Operations During the Public Health Emergency Caused by the COVID-19 Virus, Gen. Order (N.D. Ala. Mar. 17, 2020), available at https://www.alnd.uscourts.gov/sites/alnd/files/General%20Order%20-%20Court%20Operations%20During%20the%20Public%20Health%20Emergency%20Caused%20By%20the%20COVID-19%20Virus%20effective%20March%2017%2C%202020.pdf (“All civil and criminal jury trials … are hereby continued pending further court order.”; “All non-jury trials scheduled to commence before any district or magistrate judge are hereby continued pending further Court order.”).

[ix] In re: Coronavirus COVID-19 Public Emergency, Third Amended Gen. Order 20-0012 (N.D. Ill. Apr. 24, 2020), available at https://www.ilnd.uscourts.gov/_assets/_documents/AMENDED%20GENERAL%20ORDER%2020-0012.pdf (“Civil … bench trials … scheduled for on or before May 29, 2020 are stricken, to be re-set by the presiding judge to a date on or after June 1, 2020”; “Civil jury trials scheduled for on or before June 26, 2020 are stricken, to be re-set by the presiding judge to a date on or after June 29, 2020.”).

[x] In re: Coronavirus Disease Public Health Emergency, Gen. Order No. 72 (N.D. Cal. Mar. 16, 2020), available at https://cand.uscourts.gov/wp-content/uploads/general-orders/GO_72_3-16-2020.pdf (“No jury trial will be commenced before May 1, 2020.”); In re: Extending Suspension of Jury Trials and Other Proceedings During the COVID-19 Publc [SIC] Emergency, Order of the Chief Judge No. 24 (S.D. Cal. Apr. 15, 2020), available at https://www.casd.uscourts.gov/_assets/pdf/rules/Order%20of%20the%20Chief%20Judge%2024.pdf (extending jury proceedings until mid-May 2020); In re: Coronavirus Public Emergency Further Order Concerning Jury Trials and Other Proceedings, Gen. Order No. 20-05 (C.D. Cal. Apr. 13, 2020), available at https://www.cacd.uscourts.gov/sites/default/files/general-orders/GO%2020-05_0.pdf (“The Court will not call in jurors for service in civil or criminal jury trials until after June 1, 2020.”); In re: Extending Temporary Restrictions on Courthouse Access and In Court Hearings, Gen. Order No. 617 (E.D. Cal. Apr. 17, 2020), available at http://www.caed.uscourts.gov/caednew/assets/File/GO%20617.pdf (“The Court will not call in jurors for service in civil or criminal jury trials until June 15, 2020, at the earliest, if courthouses reopen to the public on June 1, 2020.”).

[xi] See, e.g., In re: Additional Temporary Restrictions on Courthouse Access and In Court Hearings,Gen. Order No. 612 (E.D. Cal. Mar. 18, 2020), available at http://www.caed.uscourts.gov/caednew/assets/File/GO%20612.pdf (“All of the court’s civil matters will be decided on the papers” unless the assigned Judge believes a hearing is necessary); In re: Coronavirus Disease Public Health Emergency, Gen. Order No. 72 (N.D. Cal. Mar. 16, 2020), available at https://cand.uscourts.gov/wp-content/uploads/general-orders/GO_72_3-16-2020.pdf (“All civil matters will be decided on the papers” unless the assigned Judge believes a hearing is necessary).

[xii] See, e.g., Standing Order Regarding Scheduled Hearings in Civil Cases in Light of Chief Judge Garcia’s March 24 Amended Order (W.D. Tex. Mar. 24, 2020), available at https://www.txwd.uscourts.gov/wp-content/uploads/2020/03/032420StandingOrderWacoCivCasesADA.pdf (“All hearings for civil cases on the Waco division’s docket will continue as scheduled, but will occur telephonically.”); In re: Court Operations During the Public Health Emergency Caused by the COVID-19 Virus, Gen. Order (N.D. Ala. Mar. 17, 2020), available at https://www.alnd.uscourts.gov/sites/alnd/files/General%20Order%20-%20Court%20Operations%20During%20the%20Public%20Health%20Emergency%20Caused%20By%20the%20COVID-19%20Virus%20effective%20March%2017%2C%202020.pdf (“All other civil proceedings scheduled to be conducted in court (e.g., motion hearings and status conferences) shall be conducted as scheduled by phone, video conferencing, or other electronic means.”).

[xiii] See, e.g., In re: Coronavirus Public Emergency Further Order Concerning Jury Trials and Other Proceedings, Gen. Order No. 20-05 (C.D. Cal. Apr. 13, 2020), available at https://www.cacd.uscourts.gov/sites/default/files/general-orders/GO%2020-05_0.pdf (“All filing deadlines will remain in place unless otherwise ordered by the presiding Judge.”); Order Regarding Court Operations Under the Exigent Circumstances Created by the COVID-19 Pandemic (W.D. Tex. Mar. 13, 2020), available at https://www.txwd.uscourts.gov/wp-content/uploads/2020/03/Order-Re-COVID-19.pdf (continuing civil bench and jury trials, but noting that “[t]hose continuances do not continue any pending deadlines other than the trial dates.”).

[xiv] See, e.g., In re: Court Operations During the Public Health Emergency Caused by the COVID-19 Virus, Gen. Order No. 2020-04 (N.D. Ala. Apr. 13, 2020), available at https://www.alnd.uscourts.gov/sites/alnd/files/General%20Order%202020-04%20effective%20April%2013%2C%202020.pdf (“Discovery Deadlines and Depositions in Civil Cases: All currently unexpired deadlines and briefing schedules in civil cases are hereby stayed through April 30, 2020”); In re: Court Operations Under the Exigent Circumstances Created by the Covid-19 Coronavirus and Related Pandemic Precautions, No. 2:20-mc-0080, Gen. Order 2020-2 (D. Me. Mar. 18, 2020), available at https://www.med.uscourts.gov/opt/sites/default/files/General_Order_2020-2.pdf (“All deadlines in criminal and civil cases between the date of this order and May 1, 2020, are extended thirty days”); In re: Coronavirus COVID-19 Public Emergency, Third Amended Gen. Order 20-0012 (N.D. Ill. Apr. 24, 2020), available at https://www.ilnd.uscourts.gov/_assets/_documents/AMENDED%20GENERAL%20ORDER%2020-0012.pdf (“Amended General Order 20-0012 extended by 21 days all deadlines, in all civil cases and Executive Committee matters … Second Amended General Order 20-0012 extended all deadlines in civil cases and Executive Committee matters by an additional 28 days. … This Third Amended General Order extends all deadlines in civil cases and Executive Committee matters by an additional 28 days.”).

[xv] In re: Court Operations Under the Exigent Circumstances Created by COVID-19, 1:00-mc-00308, Standing Order 2020-07 (ECF 99) (D. Md. Apr. 10, 2020), available at https://www.mdd.uscourts.gov/sites/mdd/files/2020-07.pdf (“ORDERED that all filing deadlines, in all cases, originally set to fall between March 16, 2020, and June 5, 2020, are EXTENDED by eighty-four (84) days”); In re: COVID-19 Pandemic Procedures, 1:20-mc-00146, Order (ECF 13) (D. Md. Apr. 10, 2020), available at https://www.mdd.uscourts.gov/sites/mdd/files/COVID-19-Order13-Discovery_0.pdf (noting that although “the Court has issued its Standing Order 2020-07,” “the Court has nonetheless determined that certain discovery in civil cases may proceed as scheduled” and specifically ordering that “unless otherwise ordered by the presiding judge, the suspension of filing deadlines set forth in Standing Order 2020-07 does not include the conduct of discovery in civil cases, provided that all parties agree to continue with discovery, and that the conduct of discovery does not involve conduct by counsel or the parties that would contravene public health orders or directives issued in response to the COVID-19 pandemic”).

[xvi] See, e.g., In re: Court Operations During the Public Health Emergency Caused by the COVID-19 Virus, Gen. Order No. 2020-04 (N.D. Ala. Apr. 13, 2020), available at https://www.alnd.uscourts.gov/sites/alnd/files/General%20Order%202020-04%20effective%20April%2013%2C%202020.pdf (“Regardless, the district and magistrate judges are free to make exceptions to this stay in extraordinary circumstances.”).

[xvii] In re: Court Operations Under the Exigent Circumstances Created by COVID-19 (D. N.D. Apr. 20, 2020), available at https://www.ndd.uscourts.gov/announce/4-20%20COVID-19%20Order.pdf.