Posts in IP News

The Trademark Manual of Examining Procedure (TMEP) provides some guidance on what an aroma needs to demonstrate before being registered, asserting that “the amount of evidence required to establish that a scent or fragrance functions as a mark is substantial.” To overcome the “substantial” threshold, an applicant must satisfy two conditions by establishing that the mark is (1) nonfunctional and (2) distinctive. An aroma that meets both of these requirements is eligible for registration on the Principal Register under §2(f) of the Latham Act, or on the Supplemental Register if the scent is nonfunctional but has not yet acquired distinctiveness. Hasbro is hoping that the scent of Play-Doh can be a source identifier for its modeling compound in the noses of consumers.

The PTAB invalidation procedure violates due process because it drags patent owners into endless assaults by patent infringers and patent thieves. Due process requires compliance with standard notions of fair play and justice, which is lacking at the PTAB. The PTAB invalidation process does not afford due process because it allows an unlimited number of infringers and patent thieves to shoot down a patent in a never ending series of challenges. If one challenge misses the target, the second and the third challenge will hit it, or ultimately it will be hit by the Nth challenger. When patents can be attacked repeatedly in such a bizarre way, the patent reward of an exclusive right is a meaningless promise.

In Owens Corning v. Fast Felt Corp, Fast Felt sued Owens Corning for infringement, and Owens Corning filed a petition with the PTO seeking inter partes review of claims 1, 2, 4, 6, and 7. All of the challenged claims contain the term “roofing or building cover material.” Owens Corning argued that the claims are obvious over Lassiter, Hefele, and Eaton. The Board concluded that Owens Corning failed to show obviousness of any of the challenged claims… While the preferred embodiment of a claim might focus on a particular element of the claim, this is not enough to narrow the claim scope of the IPR. The Board must still give the claim its broadest reasonable interpretation in light of the specification. Where the record and a correct claim construction support only one result, reversal is warranted, without need for remand.

In Organik Kimya AS v. Rohm & Haas Co., Organik Kimya AS (“Organik”) appealed the decisions of the Patent Trial and Appeal Board (“Board”) in two related inter partes review (“IPR”) proceedings for which Organik is the Petitioner. The Patent Owner is Rohm & Haas Co. The Board sustained the patentability of the challenged claims, Organik appeals… When confronted with expert experiments and testimony, practitioners must provide sufficient evidence and argument to negate and outweigh the testimony – unsupported critiques of the expert’s methodology and challenges of relevance are insufficient.

Knowing when a patent or patent application you or your client owns has been used in a 102 novelty rejection for another application presents obvious strategic benefits. Join Gene Quinn, founder of IPWatchdog.com, on Thursday, October 26, 2017, to discuss the strategic prosecution, litigation and due diligence uses of “forward rejections.” Joining him will be patent attorney Bernard Tomsa, a partner with Brooks Kusham, to discuss the patent litigation and prosecution strategies. Also on the panel will be Kent Richardson, a business attorney and patent valuation expert who has represented LinkedIn and others, to discuss due diligence and the implication the strategies discussed could have on overall patent and portfolio value.

Although there is a popular misconception among inventors new to the field of inventing, the United States Patent and Trademark Office is never going to grant a provisional patent. A “provisional”, as it is sometimes called, is a type of patent application. A provisional application for a patent can be filed at the United States Patent and Trademark Office in order to establish priority of invention, which is critically important given that the United States is now a first to file country. Although the U.S. is not a pure first to file country it is safest for inventors to assume that first to file laws do set up a race to the Patent Office. Therefore, it is essentially in virtually all cases for an inventor to file a patent application first — before anyone else who may also be working on the same invention. This is where a provisional application for a patent can be extremely useful.

On Monday, October 16th, the Internet security company VirnetX (AMEX:VHC) of Zephyr Cove, NV, announced the results of a patent litigation campaign it had pursued against Cupertino, CA-based consumer tech giant Apple Inc. (NASDAQ:AAPL). According to a press release issued by VirnetX, the Eastern District of Texas increased the damages to be paid by Apple from $302.4 million in a prior jury verdict up to nearly $440 million for Apple’s infringement of patents covering secure communications in applications like FaceTime.

The Federal Circuit heard the case of Secured Mail Solutions LLC v. Universal Wilde, Inc., where the Appellant, Secured Mail Solutions LLC (“Secured Mail”) appealed from the grant of a motion to dismiss on grounds that the claims of seven asserted patents are directed to subject matter ineligible for patenting under 35 U.S.C. § 101. The Federal Circuit affirmed the district court’s grant of Universal’s motion to dismiss… Claims determined to be patent-ineligible based on intrinsic evidence from the specification can be dismissed, at the motion to dismiss stage, without need for “extraneous fact finding outside the record.”

My sense is that non-practicing entities had long ago eliminated the Northern District as a potential venue for patent cases. But if and when there is an influx of cases to the Northern District of California, litigators who predominantly practice in Texas will have to make adjustments. While perhaps not as regimented as some other districts, the Northern District expects litigants to know the local rules and strictly comply with them, particularly for things like sealing motions that can be complicated procedurally… Unlike in Texas, technology tutorials in the Northern District are expected to be live. Attorneys need to be prepared for the judge to ask questions. They also need to make sure that the members of the team most familiar with the technology are present and ready to address any issues that may come up.

The trademark landscape is evolving rapidly, with both brand owners and trademark professionals trying to keep up. The changes are mostly driven by the steep rise in trademark applications — there was a 13.7% increase in trademark filing activity in 2015, according to WIPO — and shrinking budgets as all involved are tasked with doing more with the same or fewer resources. Trademark professionals and brands alike need to be consistent in the way they approach search and make use of the same practices they have used in the past to avoid risk, while considering challenges they face and the way that the trademark landscape is evolving.

Licensing a product instead of selling it may also be a tool for avoiding international patent exhaustion. It is common to distribute software via license, and this might avoid international exhaustion, although it will not work for all products. For example, licensing a drug makes little sense. However, re-importation of a drug would be regulated by the FDA, and the conditions and chain of control of drugs might mitigate some of the international exhaustion issues there. As such, many companies are evaluating the extent of the decision on international exhaustion and how it affects their industries. Since companies have thousands of contracts already in place and the parties will have to reevaluate their positions going forward, this is causing mass confusion and restructuring of contracts and relationships.

Due process is an essential condition for a fair proceeding involving a matter in which property rights are in dispute. Unfortunately, there is no interpretation of PTAB procedures under which due process applies. PTAB omits due process and is fundamentally unfair. As a consequence, the PTAB conclusions, and the structure and process of PTAB determinations, are unconstitutional.

Every trade secret case is built around a story. Sure, the plaintiff’s story is different than the defendant’s, even though each draws on the same facts. For the rest of us that don’t have a dog in the fight, helpful lessons are available. But sometimes you have to look hard to find them. Here’s one. When Waymo, the Google self-driving car company, filed its lawsuit against Uber earlier this year, the story was remarkable enough… This case is instructive for any business considering hiring an executive from a competitor: be aware that the cost of this recruitment might include the legal fees, disruption and liability risk of a trade secret claim.

“Increasing numbers of US operating companies dislike patent protection,” Ding explained to IAM. “[T]he production and manufacture of products are increasingly located in Asia and Asian companies have more and more patents… opportunities are being transferred to the East just like manufacturing was.” * * * Although strong patent licensing activities are surely welcome news to Huawei and the many people employed by that firm, stakeholders in the U.S. patent system likely can’t help but see this as a further harbinger that China’s innovation economy will overtake ours in the coming years.

A major legal battle over patented technologies in the mobile device communication sector between San Diego, CA-based semiconductor developer Qualcomm Inc. and Cupertino, CA-based consumer tech giant Apple Inc. took a new turn as multiple news reports indicated that Qualcomm had filed suit in China seeking a ban on the sale and manufacture of iPhones. Qualcomm’s court filing in China is the latest salvo in a barrage of legal challenges between both company’s over licensing activities between Qualcomm, Apple and the many Asian contract manufacturers who fabricate smartphones for Apple which incorporate technologies allegedly covered by Qualcomm’s patents.