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A Partner in Merchant &amp; Gould’s Minneapolis office, Joseph Dubis has extensive experience in complex patent, copyright, trademark, and trade secret matters as well as work in appellate and post grant proceedings. Joe focuses on identifying the critical aspects of the case that may drive a favorable settlement or be persuasive to a trial fact finder.

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Joseph is a&nbsp;summa cum laude&nbsp;graduate of the University of St. Thomas with a degree in biology. Following undergrad, Joseph received a doctorate in biology and biomedical science with an emphasis in neurosciences from Washington University in St. Louis. While there, he used functional magnetic resonance imaging to investigate how groups of regions of the human brain, known as networks, manifest task instructions during tasks. His attention-focused research on adults may be used to help diagnose attention disorders such as attention deficit hyperactivity disorder and Tourette syndrome in children.

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Joseph Dubis graduated&nbsp;summa cum laude&nbsp;and salutatorian from Mitchell Hamline School of Law. At Mitchell Hamline, he was a staff member on the&nbsp;Cybaris®&nbsp;Intellectual Property Law Review, publishing an article entitled “Inter Partes&nbsp;Review: A Multi-Method Comparison for Challenging Patent Validity,” and was later an executive editor for the journal.

Joe has been honored as a Minnesota Lawyer Attorney of the Year, Best Lawyers: Ones to Watch, and Minnesota Monthly’s Best Lawyers in Minnesota.

Originally from Milwaukee, Wisconsin, Joseph was active in soccer, high school band, and the Boy Scouts of America. In his free time now, Joseph enjoys participating in and watching a variety of sports and being outdoors and on the lake fishing and boating. He also likes to cook and bake when time allows.

Mitchell Hamline School of Law, J.D., 2016, 

Washington University in St. Louis, Ph.D Biological and Medical Sciences (Neurosciences), 2013

University of St. Thomas, B.S. Biology, 2008

Joseph Dubis, Intellectual Property Attorney

he / him / his

Medical Devices

Sports & Fitness

Minneapolis

Merchant &amp; Gould is pleased to announce that <a href="/people/james-w-beard/">James W. Beard</a>, a Denver partner, and <a href="/people/joseph-w-dubis/">Joe Dubis</a>, a Minneapolis associate, have been named Litigation Paralegal Co-Supervisors, effective Jan. 1, 2022. They replace <a href="/people/william-d-schultz/">Will Schultz</a> who served as Supervisor for more than five years. 



James and Joe will manage the firm’s Litigation Paralegals across Merchant &amp; Gould’s seven offices and oversee their work on depositions, witness preparation, exhibits, court preparation and research, as well as reviewing docketing and case file management procedures. &nbsp;They will also coordinate communication with and development of the group, helping the team as it implements new technologies.&nbsp; With more than 50 litigators and litigation support team members, the firm’s Litigation Practice Group has extensive IP trial and litigation experience.&nbsp;&nbsp;



“In their co-supervisor roles, James and Joe combine their litigation knowledge with their attention to detail and management skills to supervise this very important paralegal team with the Litigation Practice Group. Together, they bring their leadership and insight to the team,” said Christopher J. Leonard, Managing Director and CEO of Merchant &amp; Gould.



While his practice involves all facets of intellectual property law, James focuses on patent, copyright, and trademark and trade dress litigation for clients from a diverse range of industries. He works in all stages of litigation, from general advice and counseling to complex discovery, trials and appeals.



Joe practices all areas of intellectual property litigation proceedings including patent, copyright, and trademark litigation; appellate work; and post grant proceedings. Joseph’s motivation to become a lawyer was partly to help bridge the gap between inventors, scientists, and developers and the intellectual property protection they deserve. Since beginning as a litigation associate, Joe has developed extensive skills in the field of copyright disgorgement remedies.



Congratulations, James and Joe!

James Beard and Joe Dubis Named Litigation Paralegal Co-Supervisors

MINNEAPOLIS – April 17, 2019 – Merchant &amp; Gould, a national intellectual property law firm, is pleased to announce that Vexilar, Inc., a Minneapolis-based pioneer in sonar technology, fish finders, and the marine business, won an important IPR victory against Deeper UAB, which unsuccessfully challenged the validity of Vexilar’s patent directed to wireless fish finders using independent displays, such as smart phones and tablets.&nbsp; (<a href="https://www.uspto.gov/sites/default/files/documents/Deeper-UAB-v.-Vexilar-Inc.-IPR2018-01310-%28Paper-7%29-%28002%29.pdf" target="_blank" rel="noopener">Deeper UAB v. Vexilar Inc., No. IPR2018-01310</a>)



The Merchant &amp; Gould team filed a laser-focused Patent Owner’s Preliminary Response, arguing Deeper did not meet its burden to show a reasonable likelihood that the prior art invalidated Vexilar’s patent and that Deeper’s expert’s declaration was conclusory. The Patent Trial and Appeal Board (PTAB) denied Deeper’s IPR petition, as well as its request for rehearing. Notably, the PTAB increased the status of the denial decision by designating the decision as “Informative,” which indicates that the decision should be followed in most cases because it provides important guidance from the PTAB.



“We are very pleased with the result, which shows that it’s critical for petitioners to make sure they have strong evidence for each ground before going to the PTAB and challenging the validity of a patent,” said Thomas Leach, partner, Merchant &amp; Gould.&nbsp; “The PTAB exercised its discretion finding Deeper’s validity challenge would not be a good use of the Board’s resources and denied the IPR petition.”&nbsp;



“Particularly after the Supreme Court’s decision in SAS Inst. Inc. v. Iancu, 138 S. Ct. 1348 (2018), this decision, and its designation as Informative, serves as an indication and a guidepost from the PTAB that it is willing to entirely deny institution if the Petitioner does not have good arguments for every challenged claim in the petition,” stated Joseph Dubis, Ph.D., associate, Merchant &amp; Gould.



The Merchant &amp; Gould team included Thomas Leach, partner, Minneapolis; Joseph Dubis, Ph.D., associate, Minneapolis; Andrew Lagatta, partner, Minneapolis; and support from others.



“It’s been rewarding to watch the Merchant &amp; Gould team develop and execute a strategy to successfully defend our patented technology and market,” said Steve Baumann, President, Vexilar, Inc.&nbsp;



<h2 class="wp-block-heading">About Vexilar, Inc.</h2>



Vexilar, Inc. has been in the marine business since 1960, with a history of innovation in fishing products.&nbsp; Based in Minneapolis, the company is considered to be a “pioneer in sonar technology.”&nbsp; <a href="http://www.vexilar.com">www.vexilar.com</a>

Merchant & Gould Successfully Protects Vexilar’s Patent

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in The Best Lawyers in America: Ones to Watch 2021 Edition. 



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



MINNEAPOLIS, MN Joseph W. Dubis Ph.D.&nbsp;– Intellectual Property Law



Paige S. Stradley&nbsp;– Litigation &#8211; Intellectual Property



Michael A. Erbele&nbsp;&nbsp;– Technology Law

Merchant & Gould Attorneys Named by Best Lawyers as the Best Lawyers in America: Ones to Watch 2021 Edition

Congratulations to Merchant &amp; Gould’s attorneys who have been named 2023 Super Lawyers, distinguishing themselves in their legal practice. Only the lawyers in the top 5 percent of the total lawyers in the state were selected to be included in the Super Lawyers list.



 Scott W. Johnston, Minneapolis – IP Litigation Heather J. Kliebenstein, Minneapolis – IP Litigation William D. Schultz, Minneapolis – IP Litigation Anthony R. Zeuli, Minneapolis – IP Litigation Rachel Zimmerman Scobie, Minneapolis – IP Litigation



 In addition, Merchant &amp; Gould is proud to announce that one attorney was recognized as 2023 Rising Stars. Rising Stars are attorneys 40 and under who have been practicing law for 10 years or less. They are selected annually based on nominations from other attorneys and an independent review board. No more than 2.5 percent of attorneys are selected for Rising Stars in any state. 



Joseph W. Dubis, Minneapolis – IP Litigation 



Every year, Super Lawyers selects attorneys from all firm sizes and more than 70 practice areas on a state-by-state basis. Super Lawyers selects attorneys using a patented multiphase process, which includes evaluating them on 12 indicators of peer recognition, professional achievement, and independent research.

Merchant & Gould Announces 2023 Super Lawyers & Rising Stars

Merchant &amp; Gould is pleased to announce that Minnesota Lawyer recognized Minneapolis litigation associate <a href="https://www.merchantgould.com/people/joseph-w-dubis/">Joseph Dubis, Ph.D.</a>, as an “Up &amp; Coming Attorney,” chosen for his professional accomplishments, leadership in the community, and commitment to the legal profession.



Each year, Minnesota Lawyer recognizes a group of new attorneys who are off to a fast start in their first decade of practice, already making an impact within their firms and community. The nominations were reviewed and judged by an outside panel and the Minnesota Lawyer team.



Joe has extensive experience in complex patent, copyright, trademark, and trade secret matters, as well as work in appellate and post grant proceedings. He focuses on identifying the critical aspects of the case that may drive a favorable settlement or be persuasive to a trial fact finder.



“Joe applies his technical, scientific background and Ph.D. in biology and biomedical science to help clients push the envelope with their cutting-edge technologies. As a proponent for all areas of science and technology, he is always learning new things and helping clients expand and protect their ideas. The combination of his tool box of scientific skills and attention-focused background distinguish his proficiency and advance his approach with multidimensional litigation cases,” said Rachel Zimmerman Scobie, partner at Merchant &amp; Gould, who nominated Joe.



In addition to his client work, Joe co-manages Litigation Paralegals across Merchant &amp; Gould’s seven offices and oversees their work – combining his litigation knowledge, attention to detail, and management skills. He coordinates the firm’s legal writing and legal research training efforts for new associates and summer associates. Joe is also responsible for coordinating activities for Merchant &amp; Gould&#8217;s Minneapolis-based summer associates, striving to identify unique activities to show off the firm and the Twin Cities. In the community, he volunteers with the Volunteer Lawyers Network in the Hennepin County Housing Court, providing pro bono legal assistance and protection for evicted tenants and helping ensure they get the housing they need. In addition, Joe volunteers and helps advance opportunities for youth through his long-time involvement with Scouts BSA (formerly Boy Scouts of America). As an Eagle Scout, he is also active in coordinating activities for the local Eagle Scout Network, a professional organization for Eagle Scouts of all ages, occupations, and experiences.



“He is already making a difference in advancing business and legal industries, a tribute to how he is trailblazing, leading, mentoring, and empowering with his knowledgeable and caring approach,” Rachel added.



View the Minnesota Lawyer <a href="https://minnlawyer.com/2023/07/24/up-coming-unsung-legal-heroes-announced/">announcement here</a>.&nbsp; Congratulations, Joe!

Minnesota Lawyer Recognizes Litigation Associate Joe Dubis as “Up & Coming Attorney”

Last week, the U.S. Supreme Court issued a 9-0 decision in<a href="https://www.supremecourt.gov/opinions/22pdf/22-148_3e04.pdf"> Jack Daniel’s Properties, Inc. v. VIP Products LLC, No. 22-148 (June 8, 2023)</a>, holding that the First Amendment does not protect parody as fair use under the Lanham Act when the parody itself is a source designator.



VIP makes a “Bad Spaniels” dog toy, which resembles bottles of Jack Daniel’s Old No. 7 Black Label Tennessee Sour Mash Whiskey but with a label stating, “Bad Spaniels – The Old No. 2 on your Tennessee Carpet.” After Jack Daniel’s demanded that VIP stop selling the toy, VIP filed suit seeking a declaratory judgment of non-infringement and non-dilution of Jack Daniel’s trademarks. Jack Daniel’s counterclaimed for infringement and dilution. In a bench trial, the district court held that consumers were likely to be confused about the source of the Bad Spaniels toy, and that the toy’s negative associations with dog excrement (e.g., “The Old No. 2”) would harm Jack Daniel’s reputation. The Ninth Circuit reversed, holding that the toy was protected speech under the Rogers test, which regulates the intersection of the Lanham Act and protected speech under the First Amendment. The Rogers test requires dismissal of a trademark claim unless the complainant can show either that the challenged use of a mark has no artistic relevance to the underlying work, or that it explicitly misleads as to the source or the content of the work. On remand, the district court found that Jack Daniel’s failed the Rogers test, and the Ninth Circuit affirmed. Jack Daniel’s petitioned, and the Supreme Court granted certiorari.



The unanimous Court held that the Rogers test does not apply when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods. Without taking a position on the merits of the Rogers test in other contexts, the Court expressly rejected the Ninth Circuit’s holding that the use of a mark in a manner that includes other expressive content (e.g., parody communicating a humorous message) is automatically entitled to protection under the First Amendment. The Court determined that the Lanham Act’s likelihood of confusion analysis sufficiently balances the public interest in free expression and consumer interest in not being confused. Because VIP conceded it used the Bad Spaniels mark and trade dress as source identifiers for its own product, the only remaining question is likelihood of confusion. The Supreme Court vacated and remanded.



Coauthored by <a href="https://www.merchantgould.com/people/joseph-w-dubis/">Joseph Dubis, Ph.D.</a> and Mitchell Gross.

Supreme Court Rejects Parody Free Speech Defense for Jack Daniel’s-Like Dog Toy

Last week, the United States Court of Appeals for the Federal Circuit issued an opinion in<a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-1659.Opinion.5-19-2020_1590336.pdf" target="_blank" rel="noopener"> ESIP Series 2, LLC v. Puzhen Life USA, LLC</a>, No. 2019-1659 (May 19, 2020). Patent owner ESIP appealed from the Patent Trial and Appeal Board’s decision finding all challenged claims obvious in view of the prior art. ESIP also appealed the Board’s decision to institute inter partes review (IPR), arguing institution was improper because Puzhen violated the requirements of 35 U.S.C. § 312(a)(2) by failing to identify “all real parties in interest.”



The Federal Circuit affirmed. On the issue of the obviousness determination, the Court rejected the challenge to the Board’s fact finding, concluding that all challenged fact findings were supported by substantial evidence. The Court explained there is no error in the Board’s “decision to credit the opinion of one expert over another, and [the Court] do[es] not reweigh evidence on appeal.” The Court also rejected ESIP’s assertion that the Board committed errors of law, noting ESIP failed to identify any way the alleged errors affected the outcome.&nbsp;



On the issue of ESIP’s challenge to the Board’s institution decision, the Court concluded that the Supreme Court’s 2016 decision in Cuozzo—that 35 U.S.C. § 314(d) makes Board decisions on whether to institute IPRs final and non-appealable—applies. The Court also looked to the recent decision of the Supreme Court in Thryv, Inc v. Click-To-Call Techs., LP, which held that §&nbsp;314(d) also precludes judicial review of institution decisions addressed to application of the one-year time bar set forth in § 315(b). While Cuozzo specifically related to reviewability of the Board’s determination on the “particularity” requirement of § 312(a)(3) and Click-To-Call specifically related to reviewability of the Board’s determination on the application of the time bar of § 315(b), in both cases the Supreme Court held §&nbsp;314(d) bars challenges to the Board’s application of institution-related statutes. Applying the precedent of Cuozzo and Click-to-Call, the Federal Circuit held §&nbsp;314(d) bars ESIP’s challenge on appeal of the Board’s decision to institute the IPR over ESIP’s objection that Puzhen failed to comply with the “real parties in interest” requirement of § 312(a)(2). Such a challenge, the Court explained, represents an ordinary dispute about the application of an institution-related statute and is not subject to review on appeal, even following a final written decision.

CAFC Extends Cuozzo and Click-to-Call to Other Institution Determinations

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/19-2118.OPINION.8-20-2020_1639752.pdf" target="_blank" rel="noopener">Security People Inc. v. Iancu</a>, No. 19-2118 (August 20, 2020), affirming a district court’s dismissal of Security People’s challenge to the constitutionality of the Patent Trial and Appeal Board’s cancellation of its patent under the Administrative Procedure Act.



Following an inter partes review (IPR) trial, the Board issued a final written decision finding the lone challenged claim of Security People’s patent unpatentable. Security People appealed the decision to the Federal Circuit, which summarily affirmed the Board’s decision. The Supreme Court denied certiorari. Security People then filed suit in the U.S. District Court for the Northern District of California challenging the constitutionality of the Board’s cancellation of its patent claim. The Patent Office moved to dismiss asserting, inter alia, the district court lacked subject matter jurisdiction because Congress established a specific means for judicial review of IPR decisions, rendering collateral suits in district court inappropriate. The district court agreed and dismissed the case. Security People appealed.



The Federal Circuit affirmed. As an initial matter, the Court concluded that Congress’s intent to preclude district court judicial review of IPR final written decisions is evidenced by 35 U.S.C. §&nbsp;141(c), which provides for exclusive review of the Board’s final written decisions by the Federal Circuit. The Court further held that even if the Board lacks authority to consider constitutional challenges, the Federal Circuit has authority to review constitutional challenges on appeal. The Court reasoned it was not unusual for an appellate court reviewing the decision of an administrative agency to consider a constitutional challenge to a federal statute that the agency itself concluded it lacked authority to decide. The presence of disputed factual questions does not preclude such review, the Court held, because the Board has authority to conduct fact finding even if it cannot decide related legal questions. The Court also rejected the contention that Security People could not have raised its constitutional challenge until the Court affirmed the Board’s cancellation of the patent claim. The Court reasoned the Patent Office’s decision-making process in an IPR was complete after issuance of the final written decision, making an as-applied challenge ripe for review by the Federal Circuit on a first appeal.

CAFC Reaffirms Its Exclusive Jurisdiction Over IPR Decisions

Last week, the U.S. Supreme Court issued an opinion in <a href="https://www.supremecourt.gov/opinions/21pdf/20-915_pol1.pdf">Unicolors, Inc. v. H&amp;M Hennes &amp; Mauritz LP, No. 20-915 (Feb. 24, 2022)</a>, holding that 17 U.S.C. § 411(b) does not distinguish between a mistake of law and a mistake of fact, and that lack of either factual or legal knowledge can excuse an inaccuracy in a copyright registration under § 411(b)(1)(A)’s safe harbor provision.



Unicolors had sued H&amp;M for infringement of Unicolors’ copyright registration covering various fabric designs. After a trial, a jury found in favor of Unicolors on its infringement claim. H&amp;M moved for judgment as a matter of law, arguing Unicolors’ copyright registration was invalid. Specifically, H&amp;M argued that it was improper for Unicolors to have filed a single application seeking registration for 31 separate works because the Copyright Office regulation permitting a single application to cover multiple works only applies to works included in a single unit of publication. The district court, finding that Unicolors did not know it had failed to satisfy the “single unit of publication” requirement when it filed its application, denied H&amp;M’s motion. On appeal, the U.S. Court of Appeals for the Ninth Circuit reversed. The Ninth Circuit concluded that Unicolors’ lack of knowledge on the “single unit of publication” requirement did not excuse its conduct, holding § 411(b) excuses only good faith mistakes of fact, not of law. The Supreme Court granted Unicolors’ petition for certiorari.



On review, the Supreme Court reversed. First, the Court determined that statutory construction principles confirmed the reference to “knowledge” in § 411(b) is broad enough to include both knowledge of facts and knowledge of law. Second, the Court noted the broader construction was consistent with pre-§ 411(b) case law, which held that inadvertent mistakes on registration certificates did not invalidate a copyright. Third, the Court determined the legislative history evidenced that Congress’s intent in enacting § 411(b) was to make it easier for nonlawyers to obtain valid copyright registrations by eliminating loopholes preventing enforcement of otherwise valid registrations. The Court rejected H&amp;M’s arguments referencing the legal maxim that “ignorance of the law is no excuse” because, while the maxim has application with respect to the requisite mental state in criminal law, it does not apply in a civil case concerning the scope of a safe harbor.

SCOTUS Confirms Mistakes of Law in Copyright Registrations Can Be Saved by Safe Harbor

Last week, the U.S. Court of Appeals for the Federal Circuit issued a decision in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-142.ORDER.10-28-2020_1676855.pdf" target="_blank" rel="noopener">In re: Nitro Fluids LLC</a>, No. 2020-142 (Fed. Cir. Oct. 28, 2020), granting mandamus relief and ordering further proceedings to determine if transfer of venue is required under the first-to-file rule.



Cameron International Corporation sued Nitro Fluids in 2018 in the Southern District of Texas where both parties are headquartered. Cameron alleged Nitro infringed patents related to fracturing-fluid delivery systems. In February 2020, Cameron filed the instant suit in the Western District of Texas alleging infringement of related patents. Nitro moved the Western District to decline jurisdiction or to transfer the action based on the first-to-file rule. The Western District found the first-to-file rule would apply, but refused to transfer the action. The Western District held there were compelling circumstances not to transfer because a balance of the convenience factors did not favor transfer.



Nitro filed a petition for a writ of mandamus with the Federal Circuit seeking an order directing the Western District to transfer the action based on the first-to-file rule. The Federal Circuit granted the petition. The Court noted that the district court applied an incorrect legal standard when it concluded the first-to-file rule only comes into play after it has been determined that the balance of convenience factors favors the first-filed court. The Court explained that the correct statement of law is that transfer to the first-filed court is proper unless, in weighing the convenience factors, compelling circumstances exist to justify an exception favoring the second-filed court. Because the district court’s decision was based on an incorrect statement of the relevant legal standard, the Court vacated the order denying transfer and remanded the case for the district court to reconsider the transfer motion under the proper legal standard. The Court also noted that, on remand, the district court’s consideration of the congestion factor should focus on the overall docket congestion as between the two districts rather than on the time the related case has been pending. Finally, the Court noted that, on remand, the district court’s consideration of the judicial economy factor should focus on avoiding the need for two courts to consider the same or similar issues rather than on speed of resolution.

CAFC Holds Transfer To First-Filed Court Proper Absent Compelling Circumstances

Last week, the U.S. Court of Appeals for the Sixth Circuit issued an opinion in Joe Hand Promotions, Inc. v. Griffith, No. 21-6088 (Sep. 21, 2022), reversing and remanding a district court’s grant of Defendants’ motion for summary judgment for lack of standing in a copyright action.



On August 26, 2017, boxer Floyd Mayweather fought MMA fighter Conor McGregor in a boxing match promoted and produced by Showtime, Inc. (“the Fight”). Showtime exclusively contracted with Mayweather Promotions, LLC to exhibit and distribute the production of the Fight. Mayweather enlisted smaller distributors, including Joe Hand Promotions, Inc. (JHP), to issue commercial licenses. Mayweather gave JHP “the sole and exclusive third party license . . . to distribute . . . and authorize the public exhibition of the [Fight]” in a designated geographic area. Two months after the Fight, Showtime registered the copyright for the production of the Fight. Thereafter, Showtime signed a contract giving JHP “the exclusive right . . . to take enforcement actions with respect to any unauthorized exploitation of the Commercial Rights in the [Fight].” JHP sued Defendants for copyright infringement for having shown the Fight at their bar without a commercial license. Defendants moved for summary judgment asserting JHP lacked standing to sue because it did not own the copyright to the Fight on the day it was aired by Defendants. The district court granted the motion, concluding that the retroactive agreement between Showtime and JHP was “essentially worthless.” JHP appealed.



The Sixth Circuit reversed. The Court held that ownership of a copyright may be transferred in whole or in part by any means of conveyance or by operation of law, and that each exclusive right can be transferred individually. Prior to the fight, Showtime, Mayweather, and JHP entered into lengthy contracts carving out each party’s rights to the Fight. After the Fight, the parties signed a short agreement related to the copyright registration. The Court concluded that the fact that the post-Fight copyright agreement was short and did not reiterate rights that were agreed to pre-Fight did not make the rights illusory or deprive JHP of the rights necessary to sue. Accordingly, the Court reversed the district court’s grant of summary judgment and remanded with instructions to enter partial summary judgment in favor of JHP on standing.

Retroactive Agreements Sufficient to Create Standing Under Copyright Act

Last week, the U.S. Supreme Court issued an opinion in <a href="https://www.supremecourt.gov/opinions/20pdf/19-1434_ancf.pdf" target="_blank" rel="noopener">United States v. Arthrex, Inc.</a>, No. 19-1434 (June 21, 2021), holding that decisions issued by Administrative Patent Judges (APJs) of the Patent Trial and Appeal Board (PTAB) must be reviewable by the Director of the Patent and Trademark Office (PTO) to avoid a violation of the Appointments Clause of the Constitution.



The Appointments Clause requires that principal officers be appointed by the President, with advice and consent of the Senate. Inferior officers can be appointed in certain other ways, as allowed by Congress. In 2011, Congress passed the America Invents Act (AIA). The AIA enables the PTAB, through three-member panels of APJs, to rule on the patentability of issued patents. While the PTO Director is appointed by the President, with advice and consent of the Senate, PTAB APJs are appointed by the Secretary of Commerce. Under Section 6(c) of the AIA, decisions of the PTAB APJs were not reviewable by the Secretary or the PTO Director.



In 2015, Arthrex was granted a surgical device patent, which it later asserted against Smith &amp; Nephew, Inc. and ArthroCare Corp. In an inter partes review before the PTAB, Arthrex’s patent claims were found unpatentable. Arthrex appealed to the Federal Circuit, “argu[ing] that the APJs were principal officers (requiring presidential appointment) and therefore that their appointment by the Secretary of Commerce was unconstitutional.” The Government intervened, defending the procedure. Because the APJ decisions could not be reviewed by the Secretary of Commerce or the PTO Director, the Federal Circuit agreed that, under the AIA as written, the PTAB’s APJs were principal officers. In an effort to preserve the constitutionality of the AIA, the Federal Circuit judicially modified the statute to provide that “APJs [were] removable at will by the Secretary.”



The Supreme Court granted certiorari to consider the constitutionality of the PTAB’s structure. Noting that inferior officers must be “directed and supervised at some level by others who were appointed by Presidential nomination,” the Court agreed with the Federal Circuit that, under the AIA as written, the PTAB APJs lacked the required supervision to satisfy the Appointments Clause. The Court, however, did not agree with the Federal Circuit’s remedy. Instead, the Court held that, to satisfy the Appointments Clause, the PTO Director must have authority to review final PTAB decisions, and that Section 6(c) of the AIA cannot constitutionally be enforced to prevent such review.



This blog post was co-authored by Joe Dubis &amp; Zachary Zadow

SCOTUS Holds Decisions of PTAB APJs Must Be Reviewable by PTO Director

Last week, the U.S. Court of Appeals for the Federal Circuit issued a precedential, modified order in <a href="http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-1167.OPINION.2-18-2021_1735547.pdf" target="_blank" rel="noopener">Mojave Desert Holdings, LLC v. Crocs, Inc.</a>, No. 2020-1167 (April 21, 2021). The order granted a motion to substitute Mojave as U.S.A. Dawgs’s successor-in-interest in U.S.A. Dawgs’s appeal of the Patent Trial and Appeal Board’s decision on the patentability of a Crocs design patent.



Crocs sued U.S.A. Dawgs for infringement of a design patent, which included a single claim to an “ornamental design for footwear.” U.S.A. Dawgs requested inter partes reexamination, and the litigation was stayed. During reexamination, the examiner rejected the claim as anticipated. Crocs appealed to the Board. While the appeal was pending, U.S.A. Dawgs filed for bankruptcy and sold its assets to Mojave. Later, Mojave filed a petition with the Board to substitute in as the real-party-in-interest. The Board expunged and dismissed the request. Subsequently, the Board overturned the examiner’s claim rejection. U.S.A. Dawgs appealed the Board’s substantive decision to the Federal Circuit, and U.S.A. Dawgs and Mojave moved to substitute Mojave as the real party-in-interest.



The Federal Circuit granted the motion. The Court first rejected Crocs’s argument that Mojave was not the successor-in-interest. Distinguishing the Agilent Technologies case, the Court explained that here “all,” rather than “substantially all,” of U.S.A. Dawgs’s interests were transferred. That broad language, the Court explained, includes U.S.A. Dawgs’s interest as the reexamination requester. The Court next rejected Crocs’s argument that the motion was untimely in view of 37 C.F.R. §&nbsp;41.8(a), which requires identification of a “real party-in-interest” within 20 days of any change during a contested proceeding. The Court concluded §&nbsp;41.8(a) is designed to detect conflicts of interest and does not permit the Board to ignore a transfer of interest in the context of substitution. The Court next held that, under 35 U.S.C. § 141, a “reexamination requester’s right (including its right to appeal) may be transferred at least when it occurs as part of the transfer of the requester’s past infringement liability.” Finally, the Court held Mojave has standing. Specifically, the Court noted Mojave suffers Article III injury because success on Crocs’s infringement claim directed at U.S.A. Dawgs in the stayed litigation would reduce the amount of damages recoverable on false advertising counterclaims pending in that suit, and Mojave held U.S.A. Dawgs’s interest in those claims.

CAFC Grants Motion to Substitute in Appeal of Inter Partes Reexamination

Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/18-1049.OPINION.4-18-2023_2112573.pdf">Cioffi v. Google LLC, No. 2018-1049 (Fed. Cir. Apr. 18, 2013)</a>, reserving the district court’s determination and holding that the asserted claims were invalid under 35 U.S.C. § 251 because the subject matter of the reissue claims was not disclosed in the original patent.



Cioffi sued Google alleging infringement of four patent claims across three reissue patents related to use of multiple processors or processes in a computer system to prevent malware obtained over a network from accessing certain data stored on the computer. Following a jury trial that found the asserted claims were infringed and not invalid, district court determined that the issue of invalidity under § 251 was for the court to decide instead of the jury. The court then found Google had failed to prove by clear and convincing evidence that the asserted claims were invalid. Google appealed.



The Federal Circuit reversed. When considering the patentability of reissue patent claims, the specification of the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention” meaning “the exact embodiment claimed on reissue [must be] expressly disclosed in the specification.” Google argued that the original patent requirement was not satisfied because there was no clear and unequivocal disclosure in the original patent of an embodiment that comprises two web browser processes. Cioffi pointed to a portion of the specification as alleged support, but admitted that the original patent does not use the claim term “web browser process.”



The Court rejected as overly lenient the district court’s conclusion that “a disclosure of a broad embodiment in the original patent specification would represent a clear and unequivocal disclosure of a narrow embodiment that was not expressly described in the specification, as long as the narrow embodiment was nevertheless encompassed by the broad disclosure.” Rather, the Court held, the original patent requirement “requires more than that a skilled artisan be able to infer that the embodiment claimed on reissue was described in the specification of the original patent. There must be an ‘express disclosure’ of the ‘exact embodiment claimed on reissue.’” Finding no such express disclosure, the Court agreed with Google and held the asserted claims are invalid under the “original patent requirement” of § 251.

CAFC Rules Reissue Claims Invalid for Violating Original Patent Requirement

Last week, the U.S. Court of Appeals for the Fourth Circuit issued a precedential opinion in <a href="https://www.ca4.uscourts.gov/opinions/192390.P.pdf" target="_blank" rel="noopener">Fleet Feet, Inc. v. Nike, Inc.</a>, No. 19-2390 (Jan. 26, 2021). The Court dismissed Nike’s appeal of the preliminary injunction entered against it as moot and remanded the case for further proceedings.



In 2019, Nike launched its marketing campaign using the tagline “Sport Changes Everything.” Fleet Feet sued alleging that the campaign infringed Fleet Feet’s trademarks “Change Everything” and “Running Changes Everything.” The district court granted a preliminary injunction. Nike appealed. While the appeal was pending, Nike ended its campaign and disavowed any intent to continue using the tagline.



Because Nike no longer had a legally cognizable interest in the validity of the preliminary injunction, the Fourth Circuit dismissed the appeal as moot. A case becomes moot when the issues presented are no longer “live;” in other words, when circumstances have made it impossible for the appellate court to grant relief to the prevailing party.



Nike had argued that two live issues remained on which the Court could, and should, grant relief. Specifically, Nike argued (1) it continued to be restrained from use of any designation confusingly similar to Fleet Feet’s marks and (2)&nbsp;Nike should recover the injunction bond. On the first issue, the Court concluded that because Nike disavowed continued use of the tagline, restraint of confusingly similar designations created only a potential controversy not able to sustain the appeal. Nike failed to identify any actual speech threatened by the preliminary injunction. On the second issue, the Court concluded that although the issue of the injunction bond kept the case from being mooted, it did not keep the appeal from becoming moot. Issues related to the injunction bond first had to be resolved at a trial on the merits.



The Court also refused Nike’s request that it vacate the district court’s order and opinion granting the preliminary injunction. While an appellate court may vacate final judgments when a controversy becomes moot during the pendency of the appeal, the equitable concerns underlying such action do not exist when the mooted appeal is of a preliminary injunction. The Court concluded that vacating the preliminary injunction order and opinion was unnecessary because the preliminary injunction has no preclusive effect on the district court’s later decision on whether to enter a permanent injunction.

Fourth Circuit Dismisses Appeal of Preliminary Injunction as Moot

Recently, the U.S. Court of Appeals for the Federal Circuit issued an opinion in <a href="https://cafc.uscourts.gov/opinions-orders/23-1142.OPINION.4-30-2024_2310031.pdf">Araujo v. Framboise Holdings Inc., No. 2023-1142 (April 30, 2024)</a>, affirming the Trademark Trial and Appeal Board’s refusal to register Araujo’s standard character mark #TODECACHO.



On December 3, 2019, Araujo filed a trademark application to register #TODECACHO as a standard character mark for hair combs. Framboise Holdings, Inc. filed an opposition asserting that Araujo’s mark would likely cause confusion with Framboise’s #TODECACHO design mark. Framboise alleged ownership of its design mark based on prior use of the mark in the United States in connection with various hair products beginning as early as March 24, 2017. Relying on a declaration from the Director of Framboise, the Board held that Framboise had met its burden to establish prior use by a preponderance of the evidence and that the declaration alone was sufficient to prove prior use because it was clear, convincing, and uncontradicted. Finding an earlier priority date for Framboise, the Board found a likelihood of confusion between the two marks, sustained the opposition, and refused registration of Araujo’s mark.



The Federal Circuit affirmed. On appeal, Araujo argued the Board’s finding that Framboise established prior use of the #TODECACHO design mark was not supported by substantial evidence because the Board relied on the testimony of a single interested witness whose declaration comprised merely naked general assertions of prior use. The Court disagreed, holding the Board’s determination that Framboise established its prior use of the #TODECACHO design mark was supported by substantial evidence. The declaration at issue was based on an individual’s personal knowledge and the records maintained by Framboise, provided a list of products and a specific date the design mark was used in connection therewith, and provided representative examples of the mark as displayed on products in stores in the United States. Araujo did not offer any evidence to dispute Framboise’s prior use and declined to depose the Framboise director. The Court concluded that when presented with the employee declaration and nothing to contradict it, a reasonable mind could conclude that Framboise had established its priority date by a preponderance of the evidence.

Federal Circuit Affirms Trademark Board’s Finding of Prior Use Based on Employee Declaration

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in Best Lawyers in America: Ones to Watch 2025 Edition.



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



Minneapolis, MN



<ul>
<li>Joseph W. Dubis Ph.D. 
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Michael A. Erbele
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Patent</li>



<li>Technology Law</li>
</ul>
</li>



<li>Paige S. Stradley 
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized in the Best Lawyers: Ones to Watch® in America 2025 Edition

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in Best Lawyers in America: Ones to Watch 2022 Edition.



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



Minneapolis, MN



<ul>
<li>Joseph W. Dubis Ph.D. 
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Michael A. Erbele
<ul>
<li>Technology Law</li>
</ul>
</li>



<li>Paige S. Stradley 
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized in the Best Lawyers: Ones to Watch® in America 2022 Edition

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in Best Lawyers in America: Ones to Watch 2023 Edition.



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



Minneapolis, MN



<ul>
<li>Joseph W. Dubis Ph.D. 
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Michael A. Erbele
<ul>
<li>Technology Law</li>
</ul>
</li>



<li>Paige S. Stradley 
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized in the Best Lawyers: Ones to Watch® in America 2023 Edition

Merchant &amp; Gould is pleased to announce that the following attorneys have been included in Best Lawyers in America: Ones to Watch 2024 Edition.



These awards are recognitions given to attorneys who are earlier in their careers for outstanding professional excellence in private practice in the United States. Our &#8220;Ones to Watch&#8221; recipients typically have been in practice for 5-9 years.



Our methodology for determining these awards remains the same as it did when Best Lawyers was founded almost 40 years ago: peer-review. Lawyers are the best resource to provide feedback on the caliber of work performed by their peers.



Minneapolis, MN



<ul>
<li>Joseph W. Dubis Ph.D. 
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>



<li>Michael A. Erbele
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Patent</li>



<li>Technology Law</li>
</ul>
</li>



<li>Paige S. Stradley 
<ul>
<li>Intellectual Property Law</li>



<li>Litigation &#8211; Intellectual Property</li>
</ul>
</li>
</ul>

Merchant & Gould Attorneys Recognized in the Best Lawyers: Ones to Watch® in America 2024 Edition

Merchant &amp; Gould is proud to announce the promotion of <a href="https://www.merchantgould.com/people/elisabeth-bette-s-muirhead/">Elisabeth “Bette” S. Muirhead</a> and <a href="https://www.merchantgould.com/people/joseph-w-dubis/">Joseph W. Dubis, Ph.D.</a> to partner, effective January 1, 2025. Both have consistently exemplified a commitment to excellence, professionalism, and innovation — core values that drive our clients’ success.



“Congratulations to Bette and Joe on this significant milestone,” said Heather Kliebenstein, Managing Partner at Merchant &amp; Gould. “It is a privilege to recognize their talent, unwavering commitment to our clients, and to welcome them into their new roles.”



Elisabeth “Bette” S. Muirhead focuses her practice on intellectual property counseling and litigation, with expertise in patents, copyrights, trademarks, trade secrets, and related contract issues. She litigates cases in federal and state courts across the United States, alongside handling appellate matters, and representing clients before the International Trade Commission (ITC). With a technical background in biology and chemistry, Bette owns the technical depth to strategically counsel clients in a broad range of industries, including medical devices, consumer products, food &amp; beverage, and manufacturing. She takes a preventative approach to intellectual property strategies, focusing not only on addressing current issues but providing long-term protection for her clients.



Joseph W. Dubis, Ph.D. is an intellectual property litigator focused on complex copyright, patent, trademark, and trade secret matters as well as appellate-level disputes. With a technical background in biology and neuroscience, coupled with a passion for patent law, Joseph has successfully represented clients across the medical devices and sports &amp; fitness industries throughout state and federal courts. Alongside his litigation expertise, he has considerable experience in post-grant proceedings and a strong ability to secure favorable results for his clients.

Merchant & Gould Promotes Two Attorneys to Partner

Litigation

Post Grant Proceedings

Appellate

Chemical & Life Sciences

Emerging Technologies

Anne-Marie Larkin

Partner

Joseph W. Dubis, Ph.D.

Super Lawyers Rising Star, 2022-2024 
Selected by Best Lawyers in America: One to Watch, 2021-2025 
Mpls. St. Paul Magazine Top Attorneys in Minnesota Rising Stars, 2022 
Attorney of the Year &#8211; Groups, by Minnesota Lawyer, 2017 
Eagle Scout

Awards & Recognition

Monthly Columnist for Bench &amp; Bar of Minnesota, the official publication of the Minnesota State Bar Association
Quoted, Fed. Circ.&#8217;s FRAND Decision Will Put Spotlight On Juries, Law360, December 13, 2019
NYIPLA Endorses Patent Office Change to Phillips Claim Construction Standard, IPWatchDog, August 3, 2018

Joseph W. Dubis, Ph.D.

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