Gallagher & Dawsey Co., LPA is a unique intellectual property law firm whose practice includes intellectual property counseling and services to businesses and individual inventors, as well as other law firms, regarding patent, trademark, copyright, and trade secret issues.

Our experienced patent attorneys and trademark attorneys provide various intellectual property legal services such as patent searches, patent applications, trademark searches, trademark applications, copyright applications, infringement advice/opinions, and infringement litigation.

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The U.S. patent and trademark attorneys of Gallagher & Dawsey Co. LPA serve clients around the world from our Midwest offices. Our patent and trademark law firm has offices in Columbus, Dayton, and Cincinnati, Ohio.

USPTO Miscalculated Patent Term Adjustment: In Wyeth v. Kappos, (Fed. Cir. 2010), the Federal Circuit (CAFC) recently determined that the USPTO has been shortchanging the amount of patent term adjustment available to patentees. The USPTO is required by statute (35 U.S.C. 154(b)(1)(A)-(C)) to extend the term of a patent based for delays by the USPTO in the prosecution process. Under “part A" of the statute, the USPTO must respond to certain actions in a certain amount of time. If the USPTO does not respond within the specified time, then the term of the patent is extended one day for each day after the time period expires. Under “part B" of the statute, the USPTO provides a day of patent term adjustment for each day that the patent was pending over 3 years from the actual filing date of the application. These delays are subject to a limitation that limits the amount of term adjustment when the “part A" and “part B" delays overlap. The USPTO interpreted the statute in a way that gave patentees the greater amount of term adjustment resulting from a “part A" delay or a “part B" delay, but not both. The CAFC found this interpretation to be incorrect, and noted that the statute unambiguously sets forth the “periods of delay" and when the “overlap" limitation applies. The USPTO is currently taking steps to ensure that future patent term adjustment calculations are made correctly.

The North Face sues The South Butt: The North Face Apparel Corp. has filed a lawsuit in the U.S. District Court for the Eastern District of Missouri against Jimmy Winkelmann and his company, The South Butt, LLC. In the lawsuit, The North Face alleges that Winkelmann's use of "The South Butt" mark in connection with fleece jackets, t-shirts and other apparel infringes upon and dilutes its famous "The North Face" trademarks. It seems fairly obvious that "The South Butt" is being used to parody "The North Face," and that no one is likely to be confused as to the source of each party's respective goods. However, it will be interesting to see how this suit plays out, particularly with respect to the trademark dilution claims.

Magazine Ad Invalidates Patent During Litigation: In Iovate Health Sciences, Inc. v. BSN, Inc. (Fed. Cir. 2009), the CAFC affirmed the district court’s grant of summary judgment in favor of BSN, Inc. finding the asserted claims of U.S. Patent 6,100,287 (the '287 patent) invalid for being anticipated by a magazine advertisement. The '287 patent claimed a method for "enhancing muscle performance or recovery from fatigue" by performing the single step of administering a composition containing a ketoacid and either a cationic or dibasic amino acid. To show that the patented method was not novel, BSN, Inc. relied upon a June 1996 issue of Flex Magazine that contained an ad for Weider's VICTORY Professional Protein. The ad listed the product ingredients, which included a ketoacid and a cationic or dibasic amino acid, as well as directions for administering the product. The CAFC found that the magazine ad qualified as an anticipatory printed publication under 35 USC 102(b) that rendered the asserted claims invalid.

Fraud Summary Judgment Motion Denied by TTAB: Applying the CAFC’s recent decisions in Exergen and Bose, the Trademark Trial and Appeal Board (TTAB) denied Asian and Western Classics’ motion for summary judgment based on fraud in an ongoing cancellation proceeding. Asian and Western Classics B.V. v. Lynne Selkow, Cancellation No. 92048821 (October 22, 2009). The TTAB looked to the pleadings and found that petitioner's fraud allegations were insufficiently pled. Specifically, the TTAB noted that when allegations of fraud are made on “information and belief” there must be "specific facts upon which the belief is reasonably based." In this case, the petitioner merely relied on its “information and belief,” and did not support its fraud allegations with any specific facts. Moreover, the TTAB reminded the petitioner that "[a] pleading of fraud on the USPTO must also include an allegation of intent." Here the petitioner alleged that the registrant “knew or should have known" that the statements it made to the USPTO were false. However, as the CAFC noted in Bose, "knew or should have known" implies a negligence standard, which is not enough to infer fraud.

CAFC Reverses the TTAB’s Fraud Standard: In In re Bose Corporation, (Fed. Cir. 2009), the Court of Appeals for the Federal Circuit (CAFC) reversed a growing line of decisions by the Trademark Trial and Appeal Board (TTAB) regarding the standard for determining fraud in trademark cases. Previously, the TTAB would find that a trademark registration was fraudulently obtained if the applicant or registrant made material representations of fact in a declaration to the USPTO which it knew or should have known to be false or misleading. The CAFC noted that the TTAB was basically using a negligence standard for determining fraud by equating “should have known” with a subjective intent. Finding this standard lacking, the CAFC raised the bar for proving fraud by holding that a trademark registration is fraudulently obtained “only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the USPTO.”

CAFC Clamps Down on Pleading Inequitable Conduct: In Exergen, Corp. v. Wal Mart Stores, Inc., (Fed. Cir. 2009), the Court of Appeals for the Federal Circuit (CAFC) reminded practitioners that inequitable conduct must be pled “with particularity” under Rule 9(b) of the Federal Rules of Civil Procedure. Defendant SAAT appealed the denial of a request to amend its answer to include inequitable conduct as an affirmative defense and counterclaim against Exergen’s asserted patents. In affirming the district court, the CAFC held that “pleading inequitable conduct in patent cases…requires identification of the specific who, what, when, where, and how of the material misrepresentation or omission committed before the PTO.” The CAFC noted that SAAT’s pleadings failed to meet this standard because: (1) the specific individual who knew of the material information and misrepresented it or withheld it was not named; (2) the particular claims, and the limitations in those claims, to which the information was relevant and the specific location of the information were not identified; and (3) an explanation of why the information was material and how the information would have been used by an examiner to assess patentability were not presented. Thus, the CAFC reiterated that in pleading inequitable conduct, one must provide the specific factual circumstances of the inequitable conduct, not general allegations of wrongdoing.