Here’s the latest.

Judge Alan D. Lourie to Receive the 2020 American Inns of Court Professionalism Award for the Federal Circuit

Reported by Business Wire on

Earlier this month, the American Inns of Court announced Judge Alan D. Lourie of the Federal Circuit as the recipient of the 2020 American Inns of Court Award. Judge Lourie has been selected to receive this prestigious award. He is also celebrating his 30th anniversary on the bench since his appointment to the Federal Circuit in 1990. One of Lourie’s clerks remarked:

His inquisitive nature and his thirst for learning have infected us. He taught us the importance of handling matters with humility and humor and treating everyone with respect. He showed us his judicial style: to keep things simple and convey truth.

Prior Art-Based Invalidity Analysis May Be Possible for Indefinite Claim

Reported by Alexander P. Ott on

In Cochlear Bone Anchored Solutions AB v. Oticon Medical, AB, the Federal Circuit held all but one of Cochlear’s claims to be unpatentable because they contained means-plus-function elements absent a corresponding disclosed structure. However, a single claim containing a means-plus-function element the Federal Circuit refused to find indefinite because said element was recited as an alternative to a non-means-plus function element. Ott further explained:

The Court concluded that, even though that claim is indefinite due to its means-plus-function element, a prior art analysis could still be possible due to the non-means-plus-function alternative. The Court therefore remanded to the Board with instructions to carry out that analysis.

For more on this case, see our coverage.

True Colors Shining Through: Update On Protection For Product Packaging

Reported by James Donoian on

Donoian revisits the Federal Circuit’s decision in the case In re Forney Industries, Inc. where the Federal Circuit rejected the USTPO’s presumptions “that (1) product packaging and color marks are not inherently distinctive and (2) one seeking protection must show that the packaging or color configuration had become distinctive in the minds of consumers through years of exclusive use, promotion, commercial success, or other indicators.” The Federal Circuit clarified that “the combination of multiple distinct colors on packaging may be protectable.” Donoian offers this advice following this decision:

A guiding principle for designers (and legal teams) is whether they can convince the USPTO or a court that the proposed mark is not just a “color mark” requiring proof of long-term use, sales, and advertising but is also a “symbol” designating the origin of the goods. Put another way, the overall impression created by the combination of colors and the pattern created by those colors still must be sufficiently unique to identify the source of the goods inside the package

Donoion suggests the Forney decision will lead to an increase trademark registration applications as well as a shift in pre-litigation strategies for brands.

For more on this case, see our coverage.