Posts in IPWatchdog Articles

On May 8, the U.S. District Court for the District of Colorado granted National Geographic’s Motion to Dismiss Stouffer’s amended complaint in Stouffer v. National Geographic Partners, LLC. Stouffer sued National Geographic for trademark infringement, unfair competition, and deceptive trade practices. In response, National Geographic asserted that Stouffer’s claims were trademark-based and must be dismissed in order to protect National Geographic’s First Amendment interests. The Court addressed the question of what protections the First Amendment provides to those accused of trademark infringement and ultimately granted National Geographic’s motion to dismiss with prejudice.

It was another business-as-usual week for patent filings in the District Courts and before the Patent Trial and Appeal Board, with 54 suits and 29 petitions (two post grant reviews and 27 inter partes reviews, no covered business method reviews) filed. The Board already cited and relied on the new Apple v. Fintiv case in denying an IPR (filed three months after a complaint was filed) against a Fortress IP subsidiary’s patent; this week also saw a battle between e-cigarette (i.e., vaping) giants, saw another implantable medical device suit against Medtronic, and a surprising number of pet-related patent disputes, including iFetch, LLC and a suit between Pet Qwerks, Inc. and Benebone, LLC.

Since the Supreme Court’s Alice decision in 2014, many patent prosecutors in Industrial & Mechanical Technologies practice groups have been spared the headaches that the decision created for their colleagues in Electrical & Computer Technologies practice groups. So, it came as quite a surprise, perhaps unwelcome to some, when the Federal Circuit decided American Axle v. Neapco, invalidating claims for a method for manufacturing propshafts as being directed to ineligible subject matter under Section 101 of the U.S. Patent Act…. Almost six months later, it appears that Neapco was right, at least when it comes to patent prosecution in the mechanical arts. Indeed, both anecdotal evidence and prosecution data aggregated by Juristat demonstrate that the American Axle decision has not affected the prosecution of mechanical inventions before the USPTO in any significant way.

It has become difficult to understand why the Federal Circuit does what it does in any number of rulings, but its decisions relating to patent eligibility have set patent law back several generations, turned precedent on its head, ignored the Patent Act passed by Congress, and unnecessarily and inexplicably expanded upon bad Supreme Court precedent. Somewhere along the way, the Federal Circuit lost its footing in a spectacularly demoralizing fashion. Patents must be stopped at all costs—or so they seem to believe—and 35 U.S.C. 101 is the tool du jour.

Whoever wrote the America Invents Act (AIA) left out the U.S. Patent and Trademark Office (USPTO) examiners. The examiner on any given patent at issue in an inter partes review (IPR) proceeding at the Patent Trial and Appeal Board (PTAB) agreed with the patent holder that the patent claims, as amended, were valid. Examiners are specialists, working under Supervisory Patent Examiners (SPEs), who are even more experienced, though in very narrow fields. As such, they knew the state of the art at the time a patent was being prosecuted.

This week in Washington, D.C., both houses of Congress will host a short hearing schedule as D.C. begins a slow return to some semblance of normalcy during the COVID-19 pandemic. In the Senate, committee hearings will focus on a recent governmental cybersecurity report as well as ways to improve broadband access during the COVID-19 crisis. In the House of Representatives, a joint hearing of the House Subcommittees on Health and Energy and Commerce will explore ways to promote the development of a COVID-19 vaccine without sacrificing scientific integrity. Elsewhere, the Brookings Institution will discuss the issues to space travel posed by orbiting space junk, and the Information Technology and Innovation Foundation discusses a new vision for promoting the commercialization of energy innovation. The week got started with the first day of the KnowIt IP conference, being conducted virtually, which will explore a bevy of IP topics over three days, including a FRAND/SEP roundtable on Monday that featured IPWatchdog President and CEO Gene Quinn.

Trademarks consisting solely of a color applied to products or their packaging have been protectable under U.S. law for decades—if they meet a heightened standard for protection. Since the U.S. Supreme Court decisions in Qualitex Co. v. Jacobson Products Co. and Wal-Mart Stores, Inc. v. Samara Brothers, Inc., an applicant for a color mark has been required to prove that the color actually serves as an indicator of source in the minds of consumers by showing that the mark has acquired distinctiveness (otherwise known as secondary meaning). Yet that longstanding requirement no longer applies to all color marks, after a new decision by the Federal Circuit in In re Forney, which opens the door for the first time to certain color marks gaining protection as inherently distinctive.

On May 7, the U.S. Patent and Trademark Office (USPTO) published a Notice in the Federal Register regarding the implementation of a new pilot program for COVID-19 related applications (COVID-19 Pilot Program). Under the COVID-19 Pilot Program, the USPTO would grant prioritized examination, similar to the existing Track One Prioritized Examination program, to applications claiming a product or process related to COVID-19, which “must be subject to an applicable FDA approval for COVID-19 use”. Under the program, requests will be granted to qualifying small or micro entity applicants without payment of the typical prioritized examination fees.

Late last month, TiVo won its second intellectual property battle with Comcast at the International Trade Commission (ITC) and is poised to win a third ruling this summer. The agency issued an exclusion order under Section 337 of the Tariff Act to prevent Comcast from importing digital video receivers that violate TiVo’s Rovi cable box patents. Now, unable to win on the argument that it did not infringe on TiVo’s patents, Comcast is trying again, this time attacking the ITC as an institution.

The business of the Patent Trial and Appeal Board (PTAB) continues on as most practitioners transition into another month of working from home. Like many courts, the PTAB has adapted its standard practices. For example, the PTAB has transitioned to remote hearings and encouraged remote depositions, but has otherwise continued to advocate for business as usual. The PTAB also appears to be accommodating requested scheduling changes. This article addresses the main highlights from recent PTAB actions to provide practitioners with additional resources as they navigate PTAB practice over the next weeks and/or months.

The U.S. Court of Appeals for the Second Circuit recently confirmed that street art is, in fact, protected by copyright law.  Castillo v. G&M Realty L.P (Feb. 2020). But you wouldn’t know that from looking at Instagram. In recent years, the social media explosion has transformed “aerosol art” from a nuisance to a promotional tool. What used to be painted over the next morning, can now garner attention for a location and lead to flocks of social media junkies posing for and posting pics, leaving local shop owners hoping the foot traffic will increase sales. Many shop owners have gone so far as to commission works on their facades precisely with this in mind. The easiest way to lure in the Instagram-generation to your store is to have something unique that they can post in the hopes of adding followers. For many of these Kardashian wannabes, the goal is to build their “brand” so they can get sponsorship deals and rake in free goods and cash. A new sub-economy is exploding but, not surprisingly, few stop to consider the legal implications.

This week in Other Barks & Bites: the U.S. Patent and Trademark Office launches COVID-19-related initiatives, including a prioritized examination pilot program and an online licensing platform; the U.S. Supreme Court weighs legal arguments in U.S. Patent and Trademark Office v. Booking.com in an historic teleconference hearing; the Copyright Office issues rules on secure test registrations and electronic filing of compulsory license royalty claims; an SEC filing by Peloton shows nearly $50 million in litigation expenses after settling a major music copyright case; Thomson Reuters files copyright lawsuit over legal research copying; the TTAB enters a precedential decision affirming an examiner’s rejection of a mark including a simulation of the U.S. flag; and global stock markets show some life on optimism of easing COVID-19-related restrictions while the U.S. reports its worst-ever month of job losses.

On May 1, Representative and House Judiciary Committee Chairman Jerrold Nadler (D-NY) and a bipartisan coalition of members of the Subcommittee on Antitrust, Commercial and Administrative Law signed a letter addressed to Amazon CEO Jeff Bezos. The letter focuses on antitrust issues posed by Amazon’s alleged use of third-party seller data to develop products competing with those sellers, allegations that directly contradict testimony offered by Amazon last year during a House Antitrust Subcommittee hearing. It also calls upon Bezos to testify before the House Judiciary Committee to clear up any discrepancies between the recent Wall Street Journal article and Amazon’s prior testimony to Congress on the subject of third-party seller data.

More than 30 leading conservative and libertarian organizations have joined on a letter to Congress, voicing “strong opposition” to principles, recently unveiled by four senior lawmakers, that would deny exclusivity to inventors of COVID-19 medicines. The legislators, U.S. Reps. Jan Schakowsky (D-Ill.), Peter DeFazio (D-Ore.), Rosa DeLauro (D-Conn.) and Lloyd Doggett (D-Tex.), say they aim “to ensure any COVID-19 drug will be accessible and affordable for all people.” The proposed items are expected to show up in a contemplated coronavirus economic recovery package, the fourth in three months.

On May 5, the United States Court of Appeals for the Federal Circuit (CAFC) reversed a decision of the United States Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) in Uber Technologies, Inc., v. X One, Inc. with respect to one claim limitation and remanded the case to the PTAB to analyze the remaining limitations of the challenged claims in the first instance.  In its decision, the PTAB determined that an asserted limitation of U.S. Patent No. 8,798,593 (the ’593 patent), which is directed to a “Buddy watch application” for a mobile device, was not obvious in view of the prior art.