For our weekly SoCal IP Institute meeting on Monday, August 20, 2018, we will discuss the following cases:
NantKwest, Inc. v. Iancu (CAFC July 27, 2018 available here) NantKwest applied for a patent at the USPTO but was rejected for obviousness, the PTAB affirmed the rejection on appeal. NanKwest then appealed the board’s decision in district court, the patent office motioned for summary judgment and the motion was granted. The Patent Office then motioned to collect attorney’s fees, but the district court denied that motion. On appeal to the CAFC, the CAFC first granted the motion but then en banc review endorsed the district courts initial decision. The court reasoned that the language of 35 U.S.C. §145 stating “[a]ll the expenses of the proceedings shall be paid by the applicant” lacked the explicit congressional authorization to do away with the American Rule.
OTR Wheel v. West Worldwide Services, Inc. (9th Cir. July 24, 2018 available here) Plaintiff and defendant were both in the business of selling tires. Defendant contacted a supplier of plaintiff’s tires and asked for sample tires from molds used by plaintiff. The supplier agreed and defendant sold the tires as if they were his own. Plaintiff sued for reverse passing off, a jury found for plaintiff and the 9th circuit affirmed. Plaintiff also tried to establish defendant had committed fraud on the USPTO, but the panel rejected this contention, holding fraud must be established by clear and convincing evidence.
All are invited to join us on Monday August 20 , 2018, at noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 9 am Monday morning.