Audrey Ogurchak

Kanye West, ran into some legal trouble when he was sued for trademark infringement by Michael Medina for using the word “Loisaidas” in the title. Medina began using the name “Loisaidas” in 2008 to refer to a Latin band that he had formed. The band originated from Manhattan’s Lower East Side, for which the name came from, as “Loisaidas” is a Spanish slang term for “lower east siders.” … However, the title “Loisaidas” was not found to be explicitly misleading such to induce members of the public to believe the “work” was either created by or about Medina’s music group. In October 2016, Medina appealed the case to the US Court of Appeals for the Second Circuit.

Since the Supreme Court’s decisions in Mayo Collaborative Services v. Prometheus Laboratories (2012) and Alice Corp. v. CLS Bank Int’l (2014), patent practitioners have struggled in overcoming the newly imposed hurdle of patent eligibility. Uber is no stranger to this struggle. Of the 53 patent applications that Uber has filed since 2012, 27 of these applications have been examined, wherein Uber has received 13 final rejections based on §101. Uber has fought against many of the §101 rejections. However, Uber has thus far been unsuccessful in most of its attempts.

Uber has also obtained design patent protection for its user interfaces. The user interfaces would not be eligible for protection under trademark law, therefore, design patent protection is the strongest form of protection available. This protection prevents competitors or other companies from mimicking the Uber app interfaces, thus eliminating customer confusion. As the term of any design patent only lasts for 15 years, Uber will not be able to maintain the protection of the interfaces indefinitely. However, Uber will possibly be able to invoke common law trade dress protection after the expiration of design patents.

On Wednesday, June 29th, the United States Patent and Trademark Office hosted a panel titled Innovation to Power the Nation (and the World): Reinventing our Climate Future. This panel featured several important players involved in climate change within the United States. USPTO Director Michelle Lee delivered the keynote address while the panel was moderated by Amy Harder of the Wall Street Journal, who posed interesting and through provoking questions to the panelists. The panel comprised, Dr. Kristina Johnson, Chief Executive Officer of Cube Hydro Partners, Dr. Bantval Jayant Baliga, Director of the Power Semiconductor Research Center at North Carolina State University, Bob Perciasepe, President of the Center or Climate Change and Energy Solutions, and Nathan Hurst, Chief Sustainability & Social Impact Officer at Hewlett Packard, Inc.

Jericho’s access control model was first used as the blueprint for the Department of Defense Global Information grid in 2007. The software was later deployed across two Department of Defense secure network enterprises, providing access control to over six million persons and entities. Five years later, President Obama mandated the use of this model in every U.S. Government enterprise. The district court found the patent claims to be patent ineligible under the abstract idea doctrine, saying it did not matter that the system operated faster and more efficiently. The Federal Circuit affirmed without opinion in a Rule 36 summary affirmance.

In a unanimous decision delivered by Justice Breyer in Cuozzo Speed Technologies, LLC v. Lee, the United States Supreme Court upheld the United States Patent Office’s regulation requiring the Patent Trial and Appeal Board to apply the broadest reasonable interpretation (BRI) standard in Inter Partes Review (IPR) proceedings. The Supreme Court also held that the Patent Office’s decision to institute an IPR proceeding is not appealable to the Federal courts.

Unfortunately, §102, §103, and §112 issues can and do get wrapped into the court’s §101 reasoning, thus resulting in opinions with no differentiation. In the end, courts are forcing a round peg into a square hole when they seek to turn the patentability test into a single factor test analyzed under §101. Such a reworking of the patentability test is contrary to what the Supreme Court said in Diehr, and it violates the statutes passed by Congress. In essence, the courts are legislating from the bench when they consider novelty, obviousness and description under §101. So if you are confused by why decisions are relying on §101 when other sections of the statute seem far better suited you are not alone.

As the Supreme Court prepares to hear arguments for SCA Hygiene Products v. First Quality during the October 2016 term, another laches case, Medinol Ltd. v. Cordis Corp., awaits its chance to be heard before the Court. Medinol, similar to SCA Hygiene, presents the question of whether judges may use the equitable defense of laches to bar legal claims for damages that are timely within the express terms of the Patent Act.