Posts Tagged: "Guest Contributor"

One might naturally expect that, if a rejection under § 101 appealed from the PTAB failed to address all the claim limitations and had zero supporting evidence to determine whether something was abstract or well-understood, routine and conventional, the case would be a slam-dunk at the Federal Circuit.  After all, according to Supreme Court and Federal Circuit precedent, the Federal Circuit would be “powerless to affirm the administrative action by substituting what it considers to be a more adequate or proper basis.” Unfortunately though, nothing could be farther from the truth as is demonstrated by the Federal Circuit’s recent decision of In re Villena, Appeal No. 2017-2069 (August 29, 2018) where, as is proved by the joint appendix, the examiner failed to address each and every claim limitation separately, to address the claim limitations as a whole, ordered combination, and to provide any evidence whatsoever to support his factual assertions.

The issue faced by the EU High Court was whether shape and color of Louboutin’s mark could be separated under the circumstances; i.e., whether color applied to the sole of a high-heeled shoe is essentially a “shape” mark within the meaning of the EU trademark law. The EU High Court found in favor of Louboutin, pointing out that Louboutin did not seek to protect a particular shape, but the application of a color to a specific part of a high heeled shoe. 

George Santayana is attributed with the aphorism: “Those who cannot remember the past are condemned to repeat it.” This is modern § 101 in a nutshell. Every horror we in the patent community are now experiencing under Alice/Mayo isn’t new, but a repeat of a drama played out long ago… Every great horror story has a monster… In the patent world, the monster is “invention.”

Cobra Products filed a lawsuit for patent infringement. G.T. Water then filed for a re-examination of my patent at the U.S. Patent and Trademark Office to invalidate my patent claims. My licensing agreement with Cobra and BrassCraft was to share equally in the cost of defending my patent. However, Cobra Products elected not to help me in the defense of my patent at the USPTO. I was forced to bear the total cost of that alone. After seven years of validity proceedings, which have cost more than $250,000, the Patent Trial and Appeal Board (PTAB) has invalidated all 12 of my claims covering the Zip-It. How can the USPTO issue a patent with 12 claims and then use the PTAB to neuter my patent? Since this has been going back and forth with the court system, there are now numerous other entities which have engaged in copying and infringing my patented invention.

On August 15, 2018, Fall Line Patents, LLC asserted U.S. Patent No. 9,454,748 against a number of companies. Specifically, Fall Line alleged in nine separate lawsuits that the mobile applications provided by AMC Entertainment, McDonald’s, Boston Market, Panda Express, Papa John’s, Pizza Hut, Regal Cinemas, Starbucks, and Zoe’s Kitchen directly infringe at least Claim 1 of the ‘748 patent. All of the lawsuits were filed in the Eastern District of Texas and request permanent injunctions as well as damages.

Litigation finance in the university context is thus particularly valuable. Even for smaller matters, litigation finance shifts spend off the university’s balance sheet, allowing it to put its own capital to use in its primary endeavors: Education and innovation. For larger matters, litigation finance shifts risk from the university—which, despite its diverse technology portfolio, may have only a small number of claims with attractive litigation prospects—to an entity with a much larger book of diversified risk across uncorrelated claimants.

The patent process is long and complex, but well worth the effort if it means protecting your invention and your new company. Key decisions made along the way can help simplify future steps in the process and make obtaining a patent significantly more efficient. Early on, determining a patent scope through patentability searches can help narrow a patent application to the important novel aspects that are most worthwhile to protect. Similarly, preparing a thorough provisional application can make the non-provisional application preparation much simpler and afford better protection against later published works or filings by others. By thinking about these key decisions ahead of time and being aware of the patent process, you can be more prepared when the time comes to seek protection for your invention.

Contrary to Judge Taranto’s position, not only does the McRO claim not produce a physical improvement to a display (contrast In re Allapat), but as can be seen above a display is not even recited in the McRO claim.  Judge Taranto’s position is as best an assertion that a physical display somehow works better because of the content displayed is subjectively more appealing.  However, a colorized version of The Maltese Falcon does not improve the intrinsic qualities of a generic display.  Similarly, the intrinsic qualities of a Kindle reader are not improved based on the quality of an author’s style of writing.

In order to establish that the commercial success factor supports a non-obviousness finding, the patentee must establish that a connection (or nexus) exists between the novel aspects of the patent claim(s) and the alleged commercial success. Id.; WesternGeco LLC v. ION Geophysical Corp., 889 F.3d 1308, 1330 (Fed. Cir. 2018). In other words, the patentee must show that the novel aspects of the claim(s) are driving sales and not aspects of the claim(s) that were known in the prior art. In re Huai-Hung Kao, 639 F.3d 1057, 1069 (Fed. Cir. 2011); WesternGeco, 889 F.3d at 1330. In cases brought pursuant to the Hatch-Waxman Act, while there are exceptions, it is most common that patent challengers’ arguments focus predominantly or entirely on an alleged lack of nexus given the substantial sales typically enjoyed by the brand-name drug products that are the subject of such litigation. Though it bears noting that the mere fact that a company is pursuing a generic version of a brand-name drug, by itself, does not support a “commercial success” finding. Galderma Labs., Inc. v. Tolmar, Inc., 737 F.3d 737, 740 (Fed. Cir. 2013).

Narrowly construing the § 101 eligibility exception for abstract ideas is not only suggested by Supreme Court guidance, but also could potentially allow for increased coherence and consistency while simultaneously serving to solicit further Supreme Court guidance on eligibility. Even if the bright-line eligibility prohibition is construed narrowly, § 101 can still serve to police claiming at a level of abstraction that results in overbroad claiming.

The University of California (“UC”) and The Broad Institute, Inc. (“Broad”) are among the leaders in the development of CRISPR technology.  Both UC and Broad filed patent applications for claims broadly drawn to CRISPR-Cas9 systems and methods of DNA editing.  These parties are currently engaged in litigation over patents concerning the potentially most lucrative application of CRISPR technology – the use of CRISPR-Cas9 in plant and animal (eukaryotic) cells.  The outcome of this litigation will affect control of the CRISPR platform and development of the technology.

While registration is required in order to file a lawsuit for copyright in federal court, there is currently a circuit split with regard to what part of the process must be complete in order to meet the “registration” standard.  According to 17 U.S.C. §411(b), “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made.”  The question that circuit courts seem to be divided on is whether “registration” is satisfied when a Copyright Registration is received, or when an application has been filed. On June 28, 2018, the Supreme Court agreed to weigh in. The case at issue is Fourth Estate Public Benefit Corporation v. Wall-Street.com, LLC, which arises out of the Eleventh Circuit.

There is an alternative route is available to stay true to Supreme Court eligibility jurisprudence: Apply the Supreme Court’s standard approach of narrowly construing statutory exceptions to narrowly construe the implicit statutory exception to 35 U.S.C. § 101 for abstract ideas… In accordance with Supreme Court guidance regarding construction of statutory exceptions, the implicit statutory exception for abstract ideas should be construed “narrowly in order to preserve the primary operation of the provision” of 35 U.S.C. § 101. Clark, 489 U.S. at 739 (citing Phillips, 324 U. S. at 493).  To do otherwise would risk “frustrat[ing] the announced will of the people.” Phillips, 324 U. S. at 493.

A little more than one year ago, the U.S. Supreme Court struck down the Lanham Act’s disparagement clause as unconstitutional in Matal v. Tam, 137 S. Ct. 1744 (June 19, 2017).  While Tam settled some issues related to The Slants, the Washington Redskins, and D*kes on Bikes, the decision’s full impact remains to be seen. Issues remain ripe for future consideration. Most significantly, are trademarks considered “commercial speech?”  If so, laws relating to trademarks might be subject to relaxed scrutiny for constitutional compliance rather than strict scrutiny.

Innovators often face the question of how to best protect their new ideas.  Patents immediately come to mind for new products and processes.  However, copyright protection should also be considered.  While patent protection is limited to the claims in a particular patent, copyright protection can be broader, particularly where 3D works of art are concerned.  Additionally, copyright protection may provide some protection where a 3D rendering is made of a known 2D work.