Posts Tagged: "intellectual property"

On July 1, the U.S. Court of Appeals for the Federal Circuit (CAFC) vacated and remanded an Attorney Fee Order of the U.S. District Court for the Southern District of Florida denying an award of attorney fees to ShoppersChoice.com. Electronic Communication Technologies, LLC. v. ShoppersChoice.com, LLC.  The CAFC held that the District Court erred in failing to consider Electronic Communication Technologies, LLC’s (ECT) manner of litigation and the objective unreasonableness of ECT’s infringement claims, and further held that the court applied the incorrect attorney fee statute.

On July 7, the U. S. Court of Appeals for the Federal Circuit (CAFC), in In re: Boloro Global Limited, granted a motion by Boloro Global Limited (Boloro) to vacate and remand the decisions of the Patent Trial and Appeal Board (the Board) in three ex parte appeals that affirmed an examiner’s rejection of claims of Boloro’s patent applications. Each of Boloro’s U.S. Patent Applications Nos. 14/222,613, 14/222,615, and 14/222,616 were rejected by the patent examiner as being unpatentable under 35 U.S.C. § 101. On appeal, the Board affirmed the examiner’s rejections and denied rehearing. In August 2019, Boloro appealed the decisions to the CAFC. Subsequently, in October 2019, the CAFC issued a decision in Arthrex, Inc. v. Smith & Nephew, Inc., which was an appeal from an inter partes review, holding that administrative patent judges (APJs) were not constitutionally appointed.  In January 2020, Boloro filed a motion to vacate the Board’s decisions and remand for further proceedings consistent with the CAFC’s decision in Arthrex.

It was another relatively normal week at the Patent Trial and Appeal Board with 30 patent filings—two post grant reviews (PGRs), 28 inter partes reviews (IPRs)—and another big one in district court with 98 new petitions—but yet again, that spike is largely driven by WSOU’s unusual filing pattern. WSOU has now sued Google on 15 separate patents, all covering different software aspects of various products, and single patent suits—the former Uniloc contingent continues to drive the numbers up, and continues to favor the Western District of Texas to do so. Some of the petitions challenging the Magnetar Capital-backed Neodron were instituted this week, the same week a tranche of Magnetar’s Data Scape patents were affirmed unpatentable on Section 101 before the Federal Circuit; further Bausch & Lomb abbreviated new drug application (ANDA)-related suits were filed as discussed last week; and new and old-hand IP Edge subs continue to file at a brisk clip.

On June 25, the U.S. Court of Appeals for the Ninth Circuit issued a decision in Blumenthal Distributing v. Herman Miller, Inc. in which the appellate court reversed some parts of a Central District of California ruling on trade dress and trademark infringement claims related to office chairs sold by Herman Miller, and affirmed others. The Ninth Circuit’s decision discusses at length the issue of functionality, an area of trademark law which is undefined by statute and is notable for overturning parts of the district court decision because of an erroneous jury instruction based upon the Ninth Circuit’s own model rules. The decision also includes a partial dissent by Circuit Judge Michelle Friedland on the issue of dilution, with Judge Friedland arguing that Herman Miller hadn’t proven the requisite fame to prevail on its trademark dilution claims.

“We hold these truths to be self-evident, that all men are created equal, that they are endowed by their Creator with certain unalienable Rights, that among these are Life, Liberty and the pursuit of Happiness,” reads the preamble to the Declaration of Independence, a document authored by Thomas Jefferson, edited by Benjamin Franklin, and signed by some 56 Congressional delegates. Over the weekend, we celebrated the 244th anniversary of the signing of the Declaration of Independence, and in light of everything that has happened over the second quarter of 2020 it is perhaps a good time to reflect. So much of the second quarter of 2020 has been defined by two major events— the unnecessary and unacceptable killing of George Floyd and COVID-19. In the coming weeks and months there will be much written and debated by experts in the field of social justice, police reform and government relating to just about every aspect of the events relating to the death of Mr. Floyd. As those conversations ensue, and reforms are brought to bear, as more fully explained below, America should also take this opportunity to have a broader conversation about private property rights— real, personal and intangible.

On July 1, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a holding of the U.S. District Court for the District of New Jersey in Immunex Corporation, Amgen Manufacturing, Limited, Hoffman-La Roche Inc. v. Sandoz, Inc., Sandoz International GMBH, Sandoz GMBH, holding that Sandoz failed to prove that the asserted claims were invalid for obviousness-type double patenting (ODP), failure to meet the written description requirement, and obviousness for lack of motivation to combine the prior art references. The ruling for now blocks Sandoz from marketing its biosimilar version (Erelzi) of the popular rheumatoid arthritis drug, Enbrel. Judge Reyna dissented, arguing that certain clauses of the licensing agreement were illusory, thereby rendering the agreement an effective assignment for purposes of ODP.

Many people are looking for ways to support the Black community and to encourage police reform following the death of George Floyd and others by police. One of the most common ways to provide support has been to organize fundraisers and donate money to nonprofits and grassroots organizations coordinating these efforts. Unfortunately, organizations sometimes adopt similar names or slogans, and donations can be misdirected. In one recent example, donors who thought they were donating to the Black Lives Matter movement—operated under the name Black Lives Matter Global Network (BLMGN)—mistakenly designated funds to an unrelated nonprofit called the Black Lives Matter Foundation. The Black Lives Matter Foundation has a very similar name to the Black Lives Matter movement, but a different mission. Donors were dismayed to discover that they had inadvertently committed funds to the wrong organization.

When it comes to patents, timing matters. If two inventors are working on the same invention, it is the one who races to the patent office first that gets the brass ring. Perhaps the most famous example of a “patent race” is when Alexander Graham Bell and Elisha Gray both filed a patent for the telephone on the same day. Bell won the patent, started a successful company, and is now synonymous with the telephone, while few people remember Gray. For years, economists have used patent races as the quintessential example of how firms innovate in the presence of competition. But these discussions are usually only grounded in theory. To gain more insight on how this plays out in the real world, Jeffrey Kuhn and I created the first way to identify patent races—and we used it to analyze the effect of patent racing on innovation.

This week in Washington IP news, a pair of committee hearings in the House take a look at the use of artificial intelligence in contact tracing and exposure notification programs related to COVID-19, as well as the role of the federal government in financial supporting U.S. R&D programs. While the Senate is quiet this week, policy institutes continue to host online events on various topics of political importance in the tech world. Potential biases in algorithmic models used for AI programs are the focus of events at New America and the Information Technology & Innovation Foundation, while the Aspen Institute will host an event Wednesday morning on the potential for algorithms to unearth biases hidden in our society. The American Enterprise Institute will also explore federal research programs, including the need for a major U.S. project to jump-start basic and applied research.

With a growing number of users and increased demand for consumer electronics, smart-wearables, electric vehicles, Internet-of-Things (IoT) and Internet-of-Everything (IoET), the need for powering such devices and for hassle free charging has to keep pace with this rapid growth. “Wireless Charging” is the process of electrically charging battery-powered devices and equipment without the need for a wired electrical power connection. Broadly speaking, it includes three sub-types of charging: Inductive Charging, Resonance Charging, and Radio Charging.

On Tuesday, June 30, the U.S. Supreme Court affirmed the Fourth Circuit’s holding that BOOKING.COM is a protectable trademark. The U.S. Patent and Trademark Office (USPTO) had refused registration of Booking.com’s housemark, finding that the mark was generic—in other words, a term that consumers understand as primarily the common or class name for the underlying services. The specific issue before the Court was “[w]hether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” The Court ultimately sided with the popular online travel company Booking.com in an 8-1 decision, holding that “[a] term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” The ruling paves the way for the registration of “generic.com” terms upon a showing of acquired distinctiveness—but obtaining such registrations will not be easy, or cheap.

As we emerge from a global pandemic in which many businesses are mothballed or operating at limited capacity, we know that a great number will not survive. They will have to pivot or sell, whether asset-by-asset or entirely. Some will face fire sales, assignment for the benefit of creditors, or Chapter 7 or 11 processes supervised by the bankruptcy courts, or otherwise. It has never been more important to be thoughtful as a buyer or seller of intellectual property and technology.

Much has already been written in a relatively short period of time since the Eleventh Circuit decided Compulife Software, Inc. v. Newman, __ F.3d __, 2020 WL 2549505, (11th Cir. May 20, 2020). However, such commentaries have not addressed whether this decision is legally supportable and whether other circuits should follow this decision, which would provide a legal basis for website operators under certain circumstances to pursue unwarranted scraping of their websites. This is particularly important because the Supreme Court is currently considering whether to grant certiorari in a case involving whether website scraping is legal under the Computer Fraud and Abuse Act (CFAA). Depending on the outcome of this matter, website operators may be extremely restricted to prevent scraping under that statute.

Since the Supreme Court decided Alice Corporation Pty. Ltd. v. CLS Bank International et al. on June 19, 2014, the number of patent application rejections by the U.S. Patent and Trademark Office (USPTO), the number of cases in the courts, and the uncertainty about whether an issued patent will hold up in court over an inquiry into patent subject matter eligibility under 35 U.S.C. §101 have all increased. Dropbox, Inc., Orcinus Holdings, LLC, v. Synchronoss Technologies, Inc., decided June 19, 2020, is a relevant recent (albeit nonprecedential) ruling by the United States Court of Appeals for the Federal Circuit that serves as a useful case study on what worked and went well and what didn’t for both plaintiff and defendant in a Section 101 case. At issue was the eligibility of Dropbox patents U.S. 6,178,505, U.S. 6,058,399 and U.S. 7,567,541.

The Supreme Court’s Bilski v. Kappos decision—which celebrated its 10th birthday this past weekend—still matters, even in the age of Mayo-Alice. For one thing, the case marked the end of the patent-eligibility peace. For another, Bilski stands for the well-known principle that the “machine-or-transformation” test offers a “useful and important clue” as to whether the process claimed by a patent will qualify as patent-eligible under 35 U.S.C. §101. And at the same time, it stands for the fact that the machine-or-transformation test has been far more trivia than principle, the case law not having applied or considered that Bilski “clue” much beyond the Bilski case itself.