Putting the Appeals of Both Sides to Bed: PTAB Rulings on the Patentability of Systems and Methods for Adjusting Air Pressure in a Mattress Affirmed


The Federal Circuit recently handed down an informative decision in American National v. Sleep Number Corporation affirming the Patent Trial and Appeal Board’s final decisions in two inter partes reviews finding some claims patentable and some claims not patentable. The claims at issue related to the systems and methods for adjusting pressure in an air mattress in less time and with greater accuracy than the prior art.

The decision addresses and gives guidance on a range of issues presented by both parties — including findings of obviousness and the allocation of the burden of persuasion, the ability to amend claims in the context of an IPR, and whether a claim satisfies the enablement requirement of 35 U.S.C. § 112 when there is an error in the specification.

This article unpacks these rulings and offers takeaways on the decision.

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Ninth Circuit: Commercial Brand Names Can Be Expressive Speech

In Punchbowl, Inc. v. AJ Press, LLC, the Ninth Circuit affirmed a trademark win for upstart news outfit Punchbowl News. In doing so, the court held that First Amendment protection extends to the names of commercial enterprises. This ground-breaking decision heralds the expansion of traditional fair use defenses to any trademark infringement claims where a defendant’s conduct relates, in any way, to the broad category of activity considered “expressive” under the First Amendment.

Just when this blog was about to be posted on November 21, 2022, however, the Supreme Court granted certiorari in Jack Daniel’s Properties, Inc. v. VIP Products LLC. That news splashed a bit of cold water on Punchbowl’s apparent expansion of fair use defenses heralded above. That is because the Court’s review in Jack Daniel’s will almost certainly entail an examination (and perhaps even modification) of the Rogers test discussed below. Thus, Punchbowl’s true impact on trademark law will likely be delayed until resolution of Jack Daniel’s. Nevertheless, in the meantime, Punchbowl remains the law in the Ninth Circuit, which has one of the highest number of trademark infringement filings, as documented by the US Judiciary. Moreover, the Supreme Court’s examination of the Rogers test should not change the core holding of Punchbowl that the name of a commercial enterprise can itself be expressive speech.


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UK Regulators Step up the Pressure on Influencer Marketing: Principles for Platforms, Brands and Content Creators

Over the past few years the UK’s Competition and Markets Authority (CMA) has been actively taking steps to address consumer protection concerns with sponsorships and endorsements within social media posts that have not been clearly disclosed.

Indeed, the scale of the issue was highlighted in the Influencer Monitoring Report, published in March 2021 by another regulator, the Advertising Standards Authority (ASA), which found that a staggering 65% of the advertisements it monitored in September 2020 were not properly disclosed as ‘paid for’ content.

The CMA, ASA, and a third regulator, Ofcom, recently published a joint note outlining the regulatory framework to combat “hidden advertising” on social media platforms.

Against this background, in November 2022 the CMA issued new guidance on hidden ads with the aim of enhancing the transparency of online advertising. The regulator makes clear that hidden advertising is both harmful and illegal, and that it will not tolerate non-compliance with the rules.

The guidance sets out the regulator’s expectations for social media platforms, brands and content creators – as to how to ensure ads are compliant with the law. The guidance emphasises the need for each party to be proactive in ensuring the rules are followed, whilst recognising that there are also individual responsibilities to tackle these issues.

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Ninth Circuit Holds Foreign Trademark Defendants Can Be Served through USPTO

Suing an overseas defendant often forces plaintiffs to go through the expensive and time-consuming process of serving the defendant through the Hague Convention. This requires translating the complaint and related documents, delivering them to the foreign country’s designated “Central Authority,” and then waiting for that Central Authority to actually deliver the documents and confirm delivery to the plaintiff. These costs and delays often dissuade plaintiffs from ever bringing well-based claims.

In San Antonio Winery, Inc. v. Jiaxing Micarose Trade Co., a case of first impression in the circuit courts of appeals, the Ninth Circuit held that if a lawsuit will affect a trademark, then a foreign-based defendant may be served either through its designated agent or the Director of the United States Patent and Trademark Office. The decision will thus allow companies to short-circuit the Hague Convention requirements and better assert their right against overseas trademark trolls.

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ITC Denies Competing Motions for Sanctions For Failure to Comply with the Rules


The U.S. International Trade Commission (“ITC”) continues to be a popular venue for patent litigation under Section 337 of the Tariff Act of 1930. The speed at which Section 337 investigations proceed and the significance of an adverse decision can create circumstances that may lead to allegations of improper conduct. Similar to patent litigation in U.S. District Court, the presiding judge in a Section 337 investigation has the power to sanction the parties for improper behavior. However, a party must act quickly and follow the ITC’s rules to have any chance to have sanctions imposed on another party.

The framework for seeking sanctions in an ITC Section 337 investigation is provided by 19 CFR § 210.25. Subsection (a)(1) states that a motion for sanctions must be filed “promptly after the allegedly sanctionable conduct is discovered.” Subsection (a)(1) also requires that before filing a motion for sanctions, the party seeking to file the motion must serve a copy of the motion on the allegedly offending party in accordance with 19 CFR § 210.4 (d)(1) and provide that party at least seven days to correct the offending conduct before filing the motion. This so-called “safe harbor” provision is similar to the safe harbor provision found in Rule 11 of the Federal Rules of Civil Procedure.

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The Alice Test for Patent Ineligibility in Practice, Part Two: The Federal Circuit Affirms a Dismissal


In a recent post, I discussed a September Federal Circuit decision (Cooperative Entertainment v. Kollective Technology) that reversed a lower court dismissal of a patent infringement case on Section 101 eligibility grounds under the Supreme Court’s 2014 Alice Corp. v. CLS Bank test. Just weeks after that ruling, the Federal Circuit in IBM v. Zillow ruled on another appeal from a dismissal on eligibility grounds in a case also involving IT patents. This time, however, the Court affirmed the dismissal. Can these decisions be reconciled? In this blog, I will dissect the majority opinion and address the dissent which, relying on Cooperative Entertainment,would have allowed some of the disputed claims to survive dismissal.

In the end, I conclude that the Federal Circuit had valid grounds for affirming dismissal in this latest decision given the breadth of the claim language as compared to the prior art. And despite affirming the dismissal in this case, some of the lessons from Cooperative Entertainment have been reinforced and should continue to guide litigants.

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What Gives You the Right to Be in This IPR? A Question OpenSky Should Have Answered

On October 4, 2022, in a 52-page Director review decision in an inter partes review (IPR) proceeding involving recently-formed entity OpenSky Industries LLC, USPTO Director Katherine Vidal sanctioned OpenSky “to the fullest extent of [her] power” because of OpenSky’s abuse of the IPR process, including flaunting of the Director’s discovery orders. The Director applied negative inferences to find facts against OpenSky; demoted OpenSky to a subordinate role in the IPR; and ordered OpenSky to show cause why OpenSky should not be required to pay compensatory damages.

These actions, plus subsequent pronouncements in the past couple of weeks, signal the Director’s commitment to addressing allegations about systemic IPR abuse. Patent owners and patent challengers can expect more as the Director considers overhauling the Director review procedure, as well as the Patent Trial and Appeal Board’s (PTAB) processes for determining whether an IPR proceeding should go forward.

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God Save the Queen’s Royal Warrant Holders

With gratitude to Heloise Morle for her contributions to this post.

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In a modern world of celebrity and influencer endorsements, there is arguably one endorsement that still trumps others: the Royal Warrant.

The granting of an English monarch’s royal seals of approval dates back to 1155 – when King Henry II granted the Weavers’ Company (makers of clothes and castle hangings) a royal charter. The endorsement was formalised in 1476 when Edward IV granted the first royal warrant to printer, William Caxton; and subsequent monarchs have continued to award warrants to their favoured suppliers.

To prevent fraudulent claims of royal patronage, the Royal Warrant Holders Association was established in 1840. Today, having a royal warrant is no longer a guarantee that the holder is an exclusive supplier to the crown, merely that they are a preferred supplier.

The prestige that comes with providing goods and services to the sovereign has boosted business for centuries. A warrant is seen as a guarantee that a supplier has the highest standards of service, quality and excellence, the products are quite literally ‘Fit for a King’ no less.

However, following the death of the late Queen Elizabeth II, questions have been asked as to what happens to the warrants she granted during her lifetime?

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The Alice Test for Patent Ineligibility in Practice: The Federal Circuit Reverses District Court’s Dismissal of an Infringement Case


One of the threshold requirements for obtaining a patent under U.S. law is that the invention is a “new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof…” In other words, the subject matter of the invention must be eligible for patenting. Many courts have used this requirement as a threshold test in litigation, with early dismissal of cases that fail the test. A recent Federal Circuit decision suggests such decisions may not withstand scrutiny.


In 2014, the Supreme Court held in Alice Corp. v. CLS Bank that “[l]aws of nature, natural phenomena, and abstract ideas” are not eligible for patent protection. The patentability analysis thus turns on whether one is seeking to patent the “building blocks of human ingenuity” versus “integrat[ing] the building blocks into something more.”  The Court translated this concept into a two-step test whereby at step one, it is determined whether the claim is directed to a “patent-ineligible concept” (e.g., an abstract idea) and, at step two, the elements of the claim are analyzed to determine if it contains an “inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.”

The Recent Decision

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China: Design Patents and the Metaverse

The concept of Metaverse as an online framework for economic interoperability was born in and around 2020. Since then, giant companies all over the world ― especially in the IT, entertainment and fashion businesses ― have begun to launch products and solutions related to the ever developing Metaverse. Fashion brands, artists and entertainers, among others, have started focusing on producing digital work that is revolutionizing the way we perceive art, through the creation of NFTs and commodities. The latter, in particular, are assuming the form of non-physical goods that can be transacted and used in this totally immersive internet through Virtual Reality and Augmented Reality tools and devices, and many consumer brands are entering the Metaverse through gaming, social networks and virtual commerce.

In order to safely and effectively enjoy the economic benefits deriving from the use of their brands’ goodwill and product reputation in the Metaverse, businesses need to secure the appropriate IP rights. Fashion brands, for example, are filing trademark applications in the US, Japan and the EU to secure protection for the use of their brands on digital projections of their apparel, shoes and accessories that are transacted in the Metaverse. Other countries are lagging behind. China in particular, struggles in adapting and coping with the ever increasing need of both foreign and Chinese brands to obtain suitable trademark protection. The Chinese trademark system is in fact characterized by first-to-file and strict formalism in the selection and classification of goods and services. Without a formal update of the Chinese classification of goods and services that incorporates goods and service standards specifically aimed at the Metaverse, it is difficult for right holders to be able to create a trademark portfolio consistent with their global filings in the other major jurisdictions, where changes have already occurred to accommodate the needs surrounding the Metaverse. We have specifically covered this topic in a previous blog.

While trademarks protect the brands used in the metaverse and copyright protects NFTs as intellectual works, what about the protection of the shape, patterns and colors characterizing the non-physical commodities in the metaverse? Are they protectable by design patents? In this post we will analyze the availability of design patents for digital commodities and how it compares with other Asian countries like Japan, South Korea and Singapore.

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