In Ariad Pharmaceutical v. Eli Lilly, 2008-1248, the en banc Court of Appeals for the Federal Circuit (CAFC) in a 9-2 decision reaffirmed the existence of an independent written description requirement, separate from enablement, in 35 U.S.C. § 112, ¶1 (first paragraph).
Ariad Pharmaceuticals and its research partners (collectively, “Ariad”) brought suit against Eli Lilly (“Lilly”) alleging infringement of U.S. Patent No. 6,410,516 (“the ’516 patent”), covering methods to regulate the activity of protein called NF-kB that regulates gene activity. After a jury’s finding of infringement at trial, the case was appealed to a panel of the CAFC which found the claims at issue invalid for lack of written description in Ariad Pharms., Inc. v. Eli Lilly & Co., 560 F.3d 1366 (Fed. Cir. 2009). Ariad petitioned for a rehearing by the CAFC en banc, which was granted to address the lingering controversy regarding the existence of an independent written description requirement in § 112, ¶1. Continue Reading
In Tucumcari Aero, Inc. v. Cassels, Brock & Blackwell LLP (2010 FC 267), Tucumcari Aero, Inc. (“Tucumcari”) appeals the Registrar of Trademarks’ (“Registrar”) expungment of its MOTO MIRROR Trade-mark Reg. No. 496,171 due to lack of control of character as required by section 50(1) of the Trade-Marks Act (“the Act“). While the Registrar was satisfied as to use with truck and automobile mirrors, it found Tucumcari’s affidavit ambiguous as to the control Tucumcari had maintained and ordered the mark expunged under section 45 of the Act. Continue Reading
In College of Traditional Chinese Medical Practitioners and Acupuncturists of British Columbia v. Council of Natural Medicine College of Canada (2009 FC 1110), the Federal Court (“FC”) granted the College of Traditional Chinese Medical Practitioners and Acupuncturists of British Columbia’s (“Chinese Traditional College”) motion for summary judgment. Registered and application marks of the Council of Natural Medicine College of Canada (“Natural Medicine College”) were expunged for being descriptive under section 12(1)(b) of the Trade-Marks Act (the “Act“), not distinctive under section 18(b), and invalid for registration and in fine under section 18(1). A permanent injunction was issued against Natural Medicine College on two grounds: its marks had previously been commercially usaged under section 10 and mislead the public under section 7(d) of the Act. Continue Reading
In In re Nielsen Business Media, the Trademark Trial and Appeals Board (“TTAB”) affirmed an examining attorney’s refusal to register a mark under Section 2(e)(1) of the Trademark Act. After considering and rejecting the applicant’s claim that the acquired distinctiveness of the applicant’s previously registered marks could “tack” onto the new mark, the TTAB agreed with the examiner’s finding that the mark THE BOLLYWOOD REPORTER (Serial Nos. 77223725 and 77223738) for entertainment news papers and online publications was merely descriptive of the goods. Continue Reading
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