Our weekly SoCal IP Institute meeting on Monday, May 3, 2021 will be a discussion of a Federal Circuit case finding quantum entanglement subject matter ineligible for patent and a TTAB opposition surviving a Rule 12(b)(6) motion to dismiss:

In In re: Huping Hu, Maoxin Wu (Fed. Cir. March 17, 2021) (available here), Applicant claimed quantum entanglement subject matter related to human consciousness and its relationship to quantum theory in a series of patent applications.  The USPTO rejected the applications as inoperative, and the Federal Circuit affirmed.  On appeal, Applicant argued that the USPTO based its decision on speculation, skepticism and ignorance rather than evidence, as no prior art or any other contrary evidence was presented.  The Federal Circuit found that the USPTO had presented a prima facie case by noting that the invention violates the first law of thermodynamics and the classical laws of physics.

In The Scotch Whisky Association Ltd. v. ASW Distillery, LLC (TTAB February 16, 2021) (available here), the Scotch Whisky Association opposed an application to register the mark BURNS NIGHT for “Malt whisky; Whiskey” on the grounds that the mark was primarily geographically deceptively misdescriptive under Section 2(e)(3) and deceptive under Section 2(a). While the TTAB had previously denied Applicant’s motion to dismiss for failure to state a claim, it granted the motion in part on reconsideration and ruled that the Scotch Whisky Association had failed to plead a claim under Section 2(e)(3) and under the “wines and spirits” provision of Section 2(a) but did sufficiently plead a claim under the general deceptiveness portion of that section. The Scotch Whisky Association was given 20 days to cure the deficiencies.

We will discuss these cases at our weekly SoCal IP Institute with any who wish to join us on a video conference on May 3, 2021 at 1:00 pm. Simply email elisham @ socalip.com (remove the spaces which were added to to avoid spammers) to RSVP. This activity is approved for 1 hour of California MCLE credit.