Supreme Court Denies Cert on Section 101, Fraudulent Procurement of Trademark Petitions

On Monday, the U.S. Supreme Court denied petitions for writ of certiorari in several appeals involving intellectual property claims. These denials included yet another Section 101 case seeking clarity on the court’s two-step eligibility test and a suit seeking vacatur of a stipulated settlement for trademark infringement involving a fraudulently procured mark. The Supreme Court also granted a motion by patent owner Cellspin Soft allowing it to file its petition for writ with a supplemental appendix under seal.

Impact Engine v. Google: No Clarity on Lodestar of Section 101 Patentability Analysis

In early February, Internet ad platform developer Impact Engine filed its petition for writ to appeal the Federal Circuit’s ruling from last July affirming the invalidation of Impact Engine’s patent claims to web-based advertisement systems under 35 U.S.C. § 101. Reviewing de novo the Southern District of California’s Section 101 rulings at the motion to dismiss and summary judgment stages, the CAFC panel majority found that Impact Engine’s patent claims were directed to the abstract idea of processing user-provided information to create user-tailored outputs, including claims having a project viewer limitation that limited the alleged abstract idea to a specific, discrete implementation, according to Impact Engine.

Dissenting-in-part to the CAFC majority was Circuit Judge Jimmie Reyna. Although Judge Reyna concurred with most of the ruling, he disagreed with the majority’s treatment of the project viewer claims. Judge Reyna would have vacated the district court’s summary judgment ruling as to those claims, arguing that the district court did not sufficiently analyze the project viewer limitation under the two-step framework for means-plus-function claims.

Impact Engine’s now-denied petition for writ asked the Supreme Court to clarify if the lodestar of Section 101 patent eligibility is preventing preemption of basic technological or scientific building blocks, and whether courts, when analyzing inventions claimed in purely functional terms under 35 U.S.C. § 112(f) for purposes of Section 101 patent eligibility, must consider the specific corresponding structure defining the patent claim’s scope.

Cellspin Soft v. Fitbit: SCOTUS Grants Motion to File Petition With Appendix Under Seal

Last November, the Federal Circuit issued Cellspin Soft a pair of adverse rulings on the same day. One ruling rebuffed Cellspin Soft’s attempt to force the recusal of U.S. District Judge Yvonne Gonzalez Rogers over a conflict of interest, and the other, the subject of Cellspin Soft’s petition for writ to the Supreme Court, affirmed the Northern District of California’s summary judgment ruling of noninfringement for Fitbit and other defendants accused of infringing Cellspin Soft’s patented technology for addressing issues with distributing multimedia content. The appeal to the Supreme Court comes after the Federal Circuit’s second decision in Cellspin Soft’s case against Fitbit, the first decision resulting in a remand for claim construction.

In late January, Cellspin Soft filed a motion for leave to file its petition for writ of certiorari with the supplemental appendix under seal. Monday’s order list from the Supreme Court granted Cellspin Soft’s motion. The redacted petition should appear on the Supreme Court’s docket for this case in the coming weeks.

Marco Destin v. Levy: Due Diligence Should Have Identified Fraudulent Procurement of Mark

In February 2011, beach apparel company Marco Destin agreed to pay more than $5 million to beach retail chain L&L Wings in a stipulated settlement. This came after the Southern District of New York ruled that a liquidated damages provision in the trademark license agreement between Marco Destin and L&L Wings for the former’s use of the “WINGS” trademark, a mark Marco Destin used past the expiration of its licensing agreement, was reasonable and enforceable. Soon after the close of those proceedings, a separate case involving L&L Wings brought to light several false representations made by L&L Wings to obtain the “WINGS” federal trademark registration.

Last August, the Federal Circuit issued a ruling denying Marco Destin’s attempts to have the stipulated settlement vacated under Federal Rule of Civil Procedure 60(d)(3) for fraud on the court and the USPTO, and seeking sanctions and damages for injuries associated with the fraud. The CAFC agreed with the Southern New York district court that Marco Destin had a reasonable opportunity to uncover fraud in the initial litigation.

Marco Destin’s petition, filed last November and denied yesterday, asked the Supreme Court whether fraud directed at the court or governmental institutions can only lead to an unjust ruling. Further, the petitioner questioned the trial and appellate courts’ refusals to vacate a fraudulently procured judgment under the Supreme Court’s 1944 ruling in Hazel-Atlas Glass v. Hartford-Empire, where the Court vacated a patent infringement ruling for fraudulent procurement despite inquiry notice of the fraud by the defendant.

Kamdem-Ouaffo v. Colgate-Palmolive: Fourth Attempt to Claim Pet Food Formula Fizzles Out

Last July, the Federal Circuit issued a ruling denying several causes of action filed by Rickey Kamdem-Ouaffo against Colgate-Palmolive and several other defendants for allegedly misappropriating a pet food flavoring formulation developed by Kamdem-Ouaffo. The Federal Circuit rebuffed Kamdem-Ouaffo’s fourth attempt to pursue litigation over this alleged activity in federal and state courts after finding that the New Jersey statute of limitations on Kamdem-Ouaffo’s fraud had run, and that any timely claims were based on unsupported allegations.

After the Supreme Court granted Kamdem-Ouaffo’s motion to proceed in forma pauperis, his petition was filed last December. The petition presented three questions: whether federal courts have subject matter jurisdiction to adjudge that state courts have jurisdiction to decree summary judgment in a case properly removed to federal courts; whether a federal court has subject matter jurisdiction to rule that a Notice of Abandonment issued by the USPTO does not support trade secret misappropriation litigation; and whether a federal court can disregard written opinions of international search agencies examining Patent Cooperation Treaty (PCT) applications finding that applicants failed to produce data supporting an inventive step. The petition was denied in January and Kamdem-Ouaffo petitioned for rehearing, which was denied yesterday.

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