For our weekly SoCal IP Institute meeting on Monday, October 16, 2017, we will discuss the following cases:

Aqua Products, Inc. v. Matal, (CAFC October 4, 2017) (available here). In a very fractured decision, the CAFC found 35 U.S.C § 316(e) requires the petitioner to prove all propositions of unpatentability, (including amended claims). Aqua sued Zodiac Pool Systems for infringement of the ‘183 patent. Zodiac petitioned the PTO for an IPR. The Board instituted an IPR for claims 1-9, 13-14, 16, and 19-21. Aqua then tried to substitute claims 1, 8, and 20 with proposed claims 23, 24, and 25, but the board refused to consider the claims because Aqua had failed to show the patentability of the proposed claims. The court held, “Upon review of the statutory scheme, we believe that § 316(e) unambiguously requires the petitioner to prove all propositions of unpatentability, including for amended claims.”

Daniels v. Fanduel, (S.D. Ind. September 29, 2017) (available here). Former college athletes sued a fantasy football league for using their, name, statistics, and likeness. Defendants asserted a number of defenses including that plaintiff’s right of publicity claim was preempted by federal copyright law. The court disagreed finding that the state’s right of publicity statute was not preempted by copyright law because a person’s right to publicity is not within the purview of copyright law.

All are invited to join us on October 16, 2017, 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.