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As we are wont to do this time of year, here are the top 10 intellectual property cases of 2024.   

1. Schedule A litigation 

So-called Schedule A litigation is when numerous defendants (sometimes hundreds or even thousands) are accused of IP infringement in a single lawsuit, in an effort to save money on filing fees and as a strategy to procure early settlements. This cottage industry may be coming to an end.  

Joinder of defendants is governed by F. R. C. P. 20, which requires the defendants all somehow have worked together to infringe the same thing (the patent laws, 35 U.S.C. §299, have their own joinder provision). Some federal District Court judges are now dismissing Schedule A complaints sua sponte because even the complaint reveals it’s unlikely all defendants worked in concert or that each infringed the same IP.   

2. Copyright damages and the discovery rule 

The copyright laws have a three-year statute of limitations, but many jurisdictions have a “discovery rule” in which a copyright infringement lawsuit can be brought within three years of the copyright owner discovering the infringement. The 11th Circuit held that meant copyright damages could be won for infringements more than three years before the discovery; the 2nd Circuit had ruled otherwise. In Warner Chappell Music v. Nealy, 114 S.Ct. 1135 (2024), the Supreme Court sided 6-3 with the 11th Circuit.   

3. Design patents 

In the only en banc patent decision from the Federal Circuit this year, judging the obviousness of a patent application for a design is now more flexible, which could make it harder to patent certain ornamental designs. LKQ Corp. v. GM Global Technology Operations, LLC, 102 F.4th 1280 (Fed. Cir. 2024).  

For example, before LKQ, one prior reference had to be “basically the same” as the design of the patent application. After LKQ, that is no longer a rule. In the design patent world, it was long thought that there were special rules for designs. More and more, the courts have said no — use the same standards as utility patent applications.  

4. Invalidating disclosures vs. protective disclosures 

In 2011, as part of a harmonization effort, the U.S. changed from a first-to-invent to a first-to-file (patent application) regime, primarily because that’s the system of almost every other country.  

The weird part of the regime change was the U.S. kept its “one-year grace period” system, which almost no other country has. So much for harmonization.  

In the U.S., an inventor can invent something, publicly show it, sell it, whatever, and still file a valid patent application up to a year later. Wait longer and the prior disclosure becomes an “invalidating disclosure.”  

But to make the one-year grace period system work in the new first-to-file system, you have to allow a second-in-time patent application filer to prevail against a first-in-time patent application filer in certain scenarios. So, the patent laws allow the second-in-time filer, if he publicly discloses the invention (“a protective disclosure”) before the first-in-time filer files his patent application, to not have that patent application knock out the second-in-time patent application.  

So far so good, except for one little problem: Recently, the Federal Circuit ruled protective disclosures do not mean the same thing as invalidating disclosures. For example, a private (“secret”) sale of a product incorporating an invention would count as an invalidating disclosure but not as protective disclosure. The same would probably be true of a secret process used to manufacture a product that was then sold. That would count as an invalidating disclosure (as to both the process and the product) but probably not a protective disclosure as to the process. 

For an invalidating disclosure, the actual patented invention might never be readily known to others. For example, the sale of a product embodying the invention or public use of the invention where the public never sees its detail, or even an offer for sale of a product embodying the invention.  

For a valid protective public disclosure, the publication, sale or use must involve the public’s actual knowledge of the details of the invention. Thus, a scientific article describing the invention might work for both an invalidating disclosure and a protective disclosure, but showing a gizmo (but not its internal workings) at a trade show could constitute an invalidating disclosure but not a protective disclosure. Sanho Corp. v. Kaijet, 108 F.4th 1376 (Fed. Cir. 2024). 

5. False advertising 

Marketing often refers to a product’s uniqueness, but it had better be true. In Crocs, Inc. v. Effervescent, Inc., 119 F.4th 1 (Fed. Cir. 2024), Crocs’ website described “croslite,” the material Crocs are made of, as “patented,” “proprietary” and “exclusive.” It’s not, and as a result, Crocs could be liable for false advertising under the Lanham (Trademark) Act. 

6. Experts 

IP cases, especially patent infringement litigation, are typically a battle of experts. In patent law, an expert must be a person of ordinary skill in the art (e.g., having a bachelor’s degree in the relevant engineering field plus three to five years of experience). 

But when? For patent claim interpretation, the standard is per a person of ordinary skill in the art “at the time of the invention,” but for patent infringement, a qualified patent expert can acquire the needed education and experience after the date of the invention.  Osseo Imaging v. Planmeca USA, 116 F.4th 1335 (Fed. Cir. 2024). Were it the other way, the pool of qualified patent experts would be older. And smaller.   

7. ‘Trump Too Small’ 

The Trademark Office has long rejected trademark applications for disparaging, immoral or other scandalous subject matter. The U.S. Supreme Court overturned that practice on First Amendment grounds in both 2017 and 2019. 

The Trademark Office also rejects trademark applications involving a living individual’s name unless they consent. When Steven Elster, a labor attorney (and democrat) applied to register “Trump Too Small” for clothing without Donald Trump’s consent, the Trademark Office rejected his application. Elster appealed, but the Supreme Court in Vidale v. Elster unanimously affirmed the “names clause” of the Trademark Act as being constitutional. Don’t worry, you can still buy a Trump Too Small T-shirt if you want. 

8. Design as a trademark 

Normally, one thinks of trademarks as words (e.g., Nike, Exxon, Google), or phrases (Just Do It, Where’s the Beef?). But in certain circumstances, trademarks can cover a design (the old Coca-Cola bottle, the fish-shaped Goldfish crackers, the dripping red wax seal on a bottle of Makers Mark). That usually requires a long time marketing the design, however.  

The popular Timberland boots have been marketed and sold for decades, so their design should be registerable, no? No. Even though Timberland spent $81 million in marketing the boots in the last six years, resulting in sales averaging more than $100 million a year, their design lacks the necessary trademark “distinctiveness,” since, well, they look like a lot of other companies’ work boots. 

9. IP tech 

Until this year, I’d never seen so many new services and products developed and marketed to IP people. Numerous service providers offer IP analytics (for example, for a fee, you can see the statistics concerning any given USPTO examiner), patent drafting and prosecution tools, IP management tools, and the like. Even AI-based tools. Have I ever used any of these products or services? No. And it’s not just because I’m old; neither have my students. My wife uses some of them, however.  

10. AI 

You could not go a day in 2024 without hearing something about artificial intelligence. In the IP world, it affects copyrights (AI is trained on third-party copyrighted works), trademarks (consider AI-generated images with trademarked logos), and patents (can AI be an inventor? No. Is AI patent eligible subject matter? Maybe).  

The most interesting thing that I’ve read is that, in about four years, there will be no more human-generated content left to train AI models.  

Kirk Teska is managing partner of Iandiorio, Teska & Coleman in Peabody, Massachusetts, an adjunct professor at Suffolk University Law School, and the author of two books on patents.