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Marin Cionca, Esq., a registered patent attorney and principal and founder of Cionca Law Group P.C., is licensed to practice only before USPTO, and in the state of California. This generally means that Cionca Law Group P.C. can represent clients from all 50 states, and international clients, only before USPTO, U.S. Copyright Office and U.S. Federal Courts, in federal matters such as patents, trademarks and copyrights. In addition, generally, Cionca Law Group P.C. can represent clients before state courts, in regard to any legal matters, in California only.
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Marin11/18/2015 6:11:11 PM
PTAB Decisions Give Examples of Patent Eligible Subject MatterMore
by Marin Cionca and Iris Kim
The Supreme Court’s decision in Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S.Ct. 2347, 2014 (Alice) resulted in much confusion about whether software-related and computer-implemented inventions are patent eligible under 35 U.S.C. 101. Following this, in December of 2014, the U.S. Patent and Trademark Office (USPTO) issued interim guidelines on patent subject matter eligibility. “Interim” may indicate that further guidelines are forthcoming. Until then, decisions by the Patent Trial and Appeal Board (PTAB or Board) are a useful source of guidance for what constitutes patent eligible subject matter.
Drawing similarities between cases and the hypothetical examples provided by the USPTO can be helpful for patent prosecutors and examiners.
The two-part test provided by the USPTO is a basic analysis tool, set forth in MPEP 2106. Step 1 is to determine whether the claimed invention belongs to one of the four statutory categories of invention: a process, machine, article of manufacture, or composition of matter. If yes, Step 2 is to determine whether the claim is directed to a judicial exception, such as a law of nature, natural phenomenon, or abstract idea.
Alice also provided broad examples of what may constitute an abstract idea: (1) fundamental economic practices, (2) certain methods of organizing human activities, (3) “an idea of itself,” and (4) mathematical relationships or formulae (Alice, 134 S.Ct. at 2350; 2356; 2350; 2350).
Using these tests and guidelines, many claims were found by the Board and the Federal Circuit to be directed to patent ineligible matter under 35 U.S.C. 101. However, in two recent cases, the Board reversed the examiners’ decisions that the claims were directed to unpatentable abstract ideas, even though in the majority of appeals since Alice, the examiners’ rejections were affirmed.
In Ex Parte Cyriac J. Wegman III, 2015 WL 5578687 (Wegman, PTAB Sep. 18, 2015), regarding U.S. patent application number 12/765,954, the Board agreed with the Appellant that claim 1 is patentable subject matter. The Examiner had rejected the claims under 35 U.S.C. 101 for being directed to an abstract idea, and also under 35 U.S.C. 102 and 103 for lack of novelty and obviousness.
The representative claim, claim 1, is reproduced below:
1. A method for providing an empirical model of a defined space comprising steps of:
a. defining the desired space;
b. describing at least a portion of the defined space with multiple correlated dimensions;
c. reducing the dimensionality of the described portion;
d. combining the described portion with the remaining portion of the defined space;
e. creating a hypothetical model of the defined space; and
f. calculating coefficients for the hypothetical model according to an analysis of real and/or or virtual objects.
In their analysis of the patentability of claim 1, the Board employed the new interim guidelines issued by the USPTO following the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012) and Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S.Ct. 2347 (2014).
The Appellant argued that claim 1 is directed to a method, and thus, satisfies step 1 of the two-step test, which the Board agreed with. The Board then also agreed with the Appellant that claim 1 is much more specific than a broad abstract idea, as argued by the Examiner. The Appellant argued that claim 1 requires “calculating coefficients for the hypothetical model according to an analysis of real and/or or virtual objects.” Therefore, the method claimed involves the performing of an analysis, and is not simply an abstract idea.
Next, in Ex Parte Bruce Gordon Fuller, Brian Alexander Wall, Kevin George Gordon, Mark David Hobbs, and Mohamed Salehmohamed, 2015 WL 3467122 (Fuller et al., PTAB May 28, 2015), regarding U.S. patent application number 12/765,954, the Board again agreed with the Appellant that the subject matter was patent eligible. The Examiner had rejected claims under 35 U.S.C. 101 for being an abstract idea, and also under 35 U.S.C. 102 and 103 for lack of novelty and obviousness.
An exemplary claim, claim 1, is reproduced below:
1. A method of associating a first variable and an event on a display, the method comprising:
displaying the first variable relative to a time period on the display, resulting in a graph of the first variable;
receiving first user input from a graphical indicator device, wherein the first user input comprises an instruction to position an indicator over a portion of a data curve of the graph corresponding to a time period of interest to the user;
in a processor, determining if the event occurred during the time period of interest; and
displaying the event on the display nearby the portion of the graph if the event occurred during the time period of interest.
Of note is that both of these sets of claims from Wegman and Fuller et al. involve a physical aspect. A calculation or analysis is performed in the first, and a graph display is required in the second. In Wegman, the Board stated that the method “requires performing an analysis of objects, either actual or virtual, and calculating coefficients for the model based upon that analysis. We find that these steps are sufficiently concrete as to set them outside the broad definition of abstract idea as set forth in Alice,” (Wegman, PTAB). In Fuller et al., the Appellants argued that the physical elements present “allow a user to view a graph and an event occurring during a time period of interest on the display if the processor determines that an event occurred,” and “these elements provide sufficient structure to prevent the method steps from being interpreted as too abstract,” (Fuller et al., PTAB). The Board agreed with the Appellants’ arguments, which provides a common thread between Wegman and Fuller et al., the physical components of each of the claims.
Later, these two examiners’ rejections were upheld on other grounds, but the opinions of the Board here still offer some insight into the type of claim language and subject matter that the Board finds patentable subject matter.
Marin11/18/2015 6:15:40 PM
Covered Business Method Claims Are Not Required to Particularly Target Financial IndustryMore
By Marin Cionca and Iris Kim
To be eligible for Covered Business Method (CBM) review, a patent must first claim a method or corresponding apparatus used in the practice, administration, or management of a “financial product or service” (37 C.F.R. 42.301 (a)). Second, it must not qualify for the “technological invention” exception, which refers to patents that claim a novel, unobvious technological feature solving a technological problem. A patent only needs one claim that meets these requirements to qualify for CBM review.
In a recent decision, however, the Patent Trial and Appeal Board (PTAB or Board) decided that a claim may qualify for CBM review under Section 18 of the America Invents Act (AIA) and meet the “financial product or service” criteria even if it does not “particularly target the financial industry,” Symphony Health Solutions Corp. v. IMS Health, Inc., Case CBM2015-00085 (Patent 8,473,452 B1) (PTAB, Sept. 10, 2015).
In Symphony, the Petitioner had filed to institute a CBM review of claims in the ‘452 patent. This patent relates to a “system and method for gathering and analysis of health-care related data as well as techniques for de-identifying individuals from pharmaceutical data, in order to maintain privacy” (Symphony, PTAB). The patent teaches that laws were passed to prevent personal information from being transmitted with health care data, but that it is still important to be able to associate records. Therefore, the ‘452 patent is related to a system in which identifying information is removed, and the non-identifying information is then used for marketing researching and other purposes.
What is of note is that the ‘452 patent owner argued that this patent does not “particularly target the financial sector.” However, according to the Board, the ‘452 patent qualified for CBM review because the “challenged claims recite a system and method used in the practice, administration, or management of financial services and products.” Additionally, because the system helps to aggregate and organize data for marketing research, it was disclosed that the system could “help make business decisions,” (Symphony, PTAB) such as in sales.
An implication of this decision is that a larger group of patents may be eligible for CBM review than it was previously thought, and the definition of a CBM review-eligible patent is broader than it may seem at a first reading. Even patents that do not “particularly” target financial institutions or sectors may be eligible for CBM review.
Marin11/18/2015 7:31:35 PM
When Is a Thesis Prior Art?More
by Marin Cionca and Iris Kim
Two decisions by the Patent Trial and Appeal Board (PTAB, or Board) addressed how theses could be qualified as prior art, and the ways in which that qualification could be challenged. GlobalFoundries U.S., Inc. et al. v. Zond, LLC, IPR2014-01086, Paper 36 (GlobalFoundries, Aug. 14, 2015), relating to U.S. patent number 7,147,759, involved the evaluation of a Russian language doctoral thesis Mozgrin, which had been catalogued at the Russian State Library.
In this Final Decision, the Board addressed the issue of whether the Mozgrin thesis is prior art under 35 U.S.C. 102. A determination such as this one must be done on a case-by-case basis, by looking into the facts relating to the reference in question and its disclosure to the public. In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004). “To qualify as a prior art printed publication, the reference must have been disseminated or otherwise made accessible to persons interested and ordinarily skilled in the subject matter to which the document relates prior to the critical date. Kyocera Wireless Corp. v. Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008).” Mozgrin is a doctoral thesis originally published in 1994, and GlobalFoundries, the Petitioner, provided a copy of the catalog entry for it at the Russian State Library along with a certified English translation. The thesis contained an imprint date of 1994 or at least 1995, reading, “Catalog of Dissertations in Russian (since 1995).” However, Zond, the Patent Owner, argued that this was insufficient evidence that Mozgrin was actually catalogued on that date.
The Board found GlobalFoundries to be persuasive, because although “evidence establishing a specific date of cataloging and shelving before the critical date would have been desirable, it is not required in a public accessibility determination. See Hall, 781 F.2d at 899” (GlobalFoundries, PTAB), the critical date being September 30, 2002. Since Zond was unable to give sufficient explanation or evidence otherwise, such as why there would exist a delay of seven years for cataloguing a thesis, the Board agreed with GlobalFoundries.
Zond did also offer an argument that, even if Mozgrin had been catalogued, GlobalFoundries “would not have demonstrated that the thesis could have been obtained by any interested person outside of Russia or the countries under Russia’s control.” The Board called this argument “misplaced,” stating that there would have been “sufficient accessibility to interested persons exercising reasonable diligence.” The Board observed that Mozgrin “was cataloged and indexed in a meaningful way, by the author’s name, the IPR2014-01086 Patent 7,147,759 B2 44 title of the thesis (“High-Current Low-Pressure Quasi-Stationary Discharge in a Magnetic Field”), and the subject matter of the thesis (“Plasma Physics and Chemistry”)” (emphasis added).
In contrast to this decision, the Board also made a decision relating to a thesis that had not been catalogued or indexed in a meaningful way. Friendfinder Networks Inc. v. WAG Acquisition, LLC, IPR2015-01033, Paper 8 (Friendfinder, Oct. 19, 2015) relates to U.S. patent number 8,327,011. The Petition provided Su, a thesis submitted to the Department of Computing and Information Science at Queens University in Ontario, Canada in September of 1998. The thesis bears a copyright notice of 1998, and the Petitioner asserted that Su was published and available at the National Library of Canada in 1999. “However, Patent Owner contends that Petitioner has not met its burden to show when Su became publicly accessible and, therefore, Su has not been shown to be a prior art printed publication,” (Friendfinder, PTAB). This due in part to the Patent Owner’s argument that it is unclear whether Su was available beginning on the critical date of July 18, 2008, and unclear when Su was “accessible in a searchable or indexed manner, such that it could be located by persons interested and ordinarily skilled in the subject matter or art using reasonable diligence.”
Again, the Board referenced Kyocera Wireless, in making their determination of whether a reference is a printed publication. In previous cases, a copyright notice has been used as a prima facie evidence of publication. However, such as in this case, “in the absence of further evidence, a copyright notice may not be determinative.” As such, the Petitioner acknowledged that Su was not published until 1999; therefore, the copyright notice posted on Su holds “no weight on the issue of public accessibility” (Friendfinder, PTAB).
The Petitioner provided a “photograph of the microfiche copy of Su,” “a photograph of an envelope in which the microfiche is stored,” and an “index microfiche.” Unfortunately for the Petitioner, the envelope photograph displays only “Jan–Jul/Aug 1999 ISSN 0225-3216 Index A Authors Titles Series.” The Board stated that Su was only indexed by “rudimentary indexing,” of the author’s name and only the first word of the thesis title, “Continuous,” “which is the only indexing that the evidence suggests may have occurred before the priority date and does not suggest its relevance to the streaming media network transport problem addressed by the ’011 Patent” (Friendfinder, PTAB).
The Board then concluded with a statement that “such indexing would not provide a meaningful pathway to a researcher who was not previously aware of the existence of the thesis and was searching by subject matter” (Friendfinder, PTAB, emphasis added). These two decisions by the Board provide some guidelines for petitioners and patent owners alike. Providing a thesis as a reference may only be useful if one can also supply evidence of its availability, and that evidence should be focused around the critical date.
Challenging of that reference may be done by evaluating the institution’s policies for cataloguing of theses, how indexing is actually performed by those institutions, and whether an interested person of ordinary skill would be able to find that reference. If the indexing of a thesis is only done in a rudimentary fashion, as in the case of Su, that thesis may not be qualified as prior art.
Marin11/19/2015 2:13:05 PM
An Innovator’s Dilemma: Design or Utility Patent?More
An Innovator’s Dilemma: Design or Utility Patent?
by Marin Cionca and Iris Kim
[Originally published on August 24, 2015 in Orange County Business Journal. Republished with permission.]
Should protection be sought with a design patent, or a utility patent? When innovators create something new, this becomes an important question to answer in order to secure the best protection for their inventions.
A utility patent protects structure and function, whereas a design patent protects ornamental appearance. Using a ballpoint pen as an example, if an inventor created a pen with a unique look to it, the inventor should apply for a design patent. However, if an inventor has conceived of a different way for the ballpoint pen to work, a utility patent would be the appropriate choice. In either case, the aspects to be patented must be new and non-obvious.
Obtaining a design patent for the appearance of a pen would prevent others from making, using, selling or importing another pen that looks similar, regardless of how differently the pen functions. However, a utility patent for the way a pen works, perhaps for the way it writes, or opens and closes, would prevent others from making, using, selling or importing another that works in that same way, even if it looks very different.
In some cases, it may be beneficial to file design and utility patent applications, if the invention has novel aspects in both appearance and function. A design patent may add another layer of protection for a device that one has patented its structure or function, since aesthetics can be a large factor in marketing a product.
Costs have to be considered. Design patent applications are much simpler, and thus, cost less to prepare and file; additionally, there are no maintenance fees to pay during a design patentʼs term of fifteen years after issue. A utility patent owner must pay maintenance fees three times throughout its term of twenty years from the earliest priority date, adding to the overall cost.
Knowing which particular features are the most important inventive aspects one wishes to protect with a patent is a crucial step in identifying an invention.
These features may be the way something functions, or how a process works, or how a device looks, or perhaps all of the above.
Marin1/28/2016 9:10:56 PM
How Unpredictability Can Affect Obviousness ChallengesMore
by Marin Cionca and Iris Kim
In June 2015, Amgen challenged two patents (US Patent Nos. 8,916,157 and 8,916,158) owned by AbbVie Biotechnology Ltd., related to the drug Humira. The challenge was on the grounds that the reformulations of the biologic described in these patents are not significantly different from that of the prior art. The Patent Trial and Appeal Board (PTAB or The Board) has denied both of Amgen’s requests for inter partes review, in Amgen Inc. v. AbbVie Biotechnology Ltd. case numbers IPR2015-01514 and IPR2015-01517.
AbbVie asserted to the Board that preparing stable liquid aqueous formulations of antibodies at the recited concentrations may lead to unpredictable results. A claim is unpatentable as being obvious if “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made” (35 U.S.C. 103(a)) to one of ordinary skill in the art. Absolute predictability is not a requirement for obviousness, but “some articulated reasoning with rational underpinning to support the legal conclusion of obviousness” should be present (KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)).
In case IPR2015-01517, Amgen had submitted an argument that an article, Wang, provided guidance for formulating stable liquid aqueous antibodies at the concentration recited in the patents. However, AbbVie asserted that the Wang article demonstrates unpredictability in this art of formulating proteins as well, stating “[v]ery often, proteins have to be evaluated individually and stabilized on a trial-and-error basis.” “Although the Wang article indeed provides general guidance, the Wang article also underscores the unpredictability of the undertaking” (PTAB, IPR2015-01517).
Further examples of references that provide general guidance were provided. Amgen argued using Salfeld and Heavnerm stating that “because both focus on anti-TNF alpha antibodies, both focus on IgG antibodies, and both teach how to formulate these antibodies” a skilled artisan “would have had reason to combine Salfeld and Heavner” (PTAB, IPR2015-01517). AbbVie’s response was that Salfeld provides guidance “merely as a general approach” and Heavner only provides “bulk recitations” and “offers no guidance at all on how to actually select from this massive number of possible combinations” (PTAB, IPR2015-01517).
Given these arguments, the Board found that Amgen was not persuasive in their argument that a “skilled person would have had a reasonable expectation of success in applying the formulations commercially available and taught in the literature to D2E7,” D2E7 being the antibody described in the ‘158 patent (PTAB, IPR2015-01517). The Board concluded “that Amgen has not established a reasonable likelihood of prevailing with respect to its challenge,” (PTAB, IPR2015-01517). Similar arguments were presented in case IPR2015-01514, and both requests for inter partes review were denied in January 2016, demonstrating that, even with guidance, unpredictability may still be a factor in certain fields.
Marin1/28/2016 9:15:16 PM
The Patent Trial and Appeal Board Designates Two Decisions as PrecedentialMore
by Marin Cionca and Iris Kim
In January 2016, the Patent Trial and Appeal Board (PTAB or the Board) marked two of their 2015 decisions as precedential. LG Electronics, Inc. v. Mondis Tech Ltd.,(IPR2015-00937, Paper 8, PTAB, Sept. 17, 2015) and Westlake Services, LLC v. Credit Acceptance Corp., (CBM2014-00176, Paper 28, PTAB, May 14, 2015) are the second and third America Invents Act (AIA) review decisions that the Board designated as precedential, the first AIA precedential decision being SecureBuy, LLC v. CardinalCommerce Corp. (CBM 2014-00035, PTAB, Apr. 25, 2014). The majority of decisions by the Board are routine, and others may be designated as informative or precedential. A precedential decision is significant in that it is binding authority on the Board unless overcome by a subsequent binding authority, for instance, a decision by the U.S. Supreme Court or the Federal Circuit Court of Appeals.
LG Electronics, Inc. v. Mondis Tech Ltd. concerns the 12 month window in complaint filings, namely, the interpretation of “served with a complaint” with regards to the one-year time bar that is set forth by 35 U.S.C. 315(b). This time bar prevents a petitioner from requesting an inter partes review of a patent if they would be filing after one year from the date they are served with a complaint alleging infringement of that patent. When multiple complaint filings have occurred, the interpretation of 35 U.S.C. 315(b) could become complex. The Board interpreted in LG Electronics that there is to be a bar even if subsequent complaints were served within that 12 month window of time.
Westlake Services, LLC v. Credit Acceptance Corp. concerns the interpretation of the estoppel provision set forth in 35 U.S.C. 325(e)(1). Claims that were denied trial do not trigger 35 U.S.C. 325(e)(1) estoppel where other claims in the patent move forward through trial. 35 U.S.C. 325(e)(1) states that a “petitioner in a post-grant review of a claim in a patent… that results in a final written decision under section 328(a)… may not request or maintain a proceeding before the Office with respect to that claim on any ground that the petitioner raised or reasonably could have raised during that post-grant review.” The Board made a clarification in Westlake Services that the decision not to proceed to trial on a subset of claims of a patent does not constitute a “final written decision” on the patentability of the claims that triggered the 35 U.S.C. 325(e)(1) estoppel, and estoppel is to be “applied on a claim-by-claim basis.”
M. Cionca and I. Kim2/4/2016 5:55:16 PM
Software Inventions Are Still Patentable!More
In June 2014, the Supreme Court ruled in Alice Corp. v. CLS Bank Int’l (“Alice”) that the claims in the four disputed software-based patents owned by Alice Corp. were directed to an “abstract idea,” and thus were patent-ineligible under 35 U.S.C. 101. The Supreme Court’s decision was based on the reasoning that the claims were said not to be more than instructions for implementating an abstract idea, the idea of intermediated settlement using a generic computer. This decision soon led to much confusion about software invention patentability and impacted how this patentability is evaluated by patent practitioners and U.S. Patent and Trademark Office (USPTO) examiners alike.
The USPTO then issued “2014 Interim Guidance on Subject Matter Eligibility” after Alice, which details the subject matter eligibility analysis for claims, providing a baseline guidance for examiners. The USPTO then supplemented that guidance with eight sets of example claims directed to computer-implemented inventions or software inventions. Four example are directed to patent-eligible subject matter while the other four sets recite patent-ineligible matter. Practice revealed that some examiners are not familiar with these relatively recent examples. When this is the case, it falls upon the patent practitioners to make their cases by bringing these guidelines and examples to the examiners’ attention.
Example 3 of the USPTO’s set of eight examples uses a two-step test, commonly referred to as the Mayo test. This test was used in Example 3 to analyze the patentability of a claim reciting digital image processing by generating a noise mask. Step 1 checks whether the invention (here, a process) belongs to a statutory category of invention and, if so, whether it is a “judicial exception” such as an abstract idea. Generating a mask was found to be an abstract idea. However, when examined as a whole in Step 2, the claim represents more than that abstract idea. Step 2 of the two-step test is to search for elements that show an inventive concept. Here, the process of comparing and converting data were found to add meaningful limitations, “improve the functioning of the claimed computer” and result in an “improved digital image.” The claim is thus patentable, and Example 3 can be used as support that for the idea that software claims can still be patentable.
Still, examiners may issue automatic 101 rejections for any software-based or computer-implemented inventions. These rejections can and do happen. When this is the case, patent practitioners must appropriately respond, and they can point out that examiners cannot issue automatic rejections without a fact-based reasoning behind the rejection. The Patent Trial and Appeal Board held in Ex Parte Poisson (February 26, 2015) that examiners must provide an evidence-based prima facie case of patent ineligibility, and the Poisson case provides a clear example of this.
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) was a significant decision from the Federal Circuit as being the first to uphold the subject matter eligibility of computer-implemented claims after Alice. This decision is a strong example showing that software-related inventions can still be patentable. Here, it was shown that claims directed to making an improvement to a computer system or solving a problem within the system may be patentable. More specifically, the Federal Circuit saw that “the claimed solution is necessarily rooted in computer technology to overcome a problem specifically arising in the realm of computer networks” (DDR Holdings) leading to their conclusion that these claims “specify how interactions with the Internet are manipulated to yield a desired result” and “recite an invention that is not merely the routine or conventional use of the Internet.”
Although some confusion still remains regrading software patent eligibility, it is important to adopt a thorough approach not only to drafting these software patent applications, but also to working with and even educating the USPTO examiners. Particularly after Alice, broad subject matter eligibility in the claims can and should be advocated for by patent practitioners, who must also advocate for their clients’ cases to be handled properly.
Alice Corp. v. CLS Bank: http://www.supremecourt.gov/opinions/13pdf/13-298_7lh8.pdf
DDR Holdings v. Hotels.com: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/13-1505.Opinion.12-3-2014.1.PDF
Marin Cionca2/16/2016 6:34:53 PM
In IPRs, patentees have to show that substitute patent claims are patentableMore
In February 11, 2016 the Federal Circuit has issued a precedential opinion in an appeal related to an inter partes review (IPR) dispute between Nike, Inc. and Adidas AG at the Patent Trial and Appeal Board (PTAB). The dispute involves U.S. Patent No. 7,347,011 (the ’011 patent) owned by Nike, Inc. (Nike) and covering a unitary shoe upper. Several lessons can be learned or refreshed upon by reviewing this opinion. Some are presented succinctly below.
While a Patentee Can Present Substitute Claims in an IPR Proceedings, the Patentee has the Burden of Proof to Establish that the Substitute Claims Are Patentable Over the Prior Art. Here, Nike canceled all of the 46 claims challenged by Addidas and requested the entry of four substitute claims 47-50. PTAB canceled the 46 claims but denied entry of Nike’s four substitute claims. “First, the Board acknowledged the requirement announced in the Board’s Idle Free decision that a patent owner “persuade the Board that the proposed substitute claim is patentable over the prior art of record, and over prior art not of record but known to the patent owner.” J.A. 34–36. Because Nike’s motion included only a conclusory statement that the proposed claims were patentable over prior art not of record but known to Nike, the Board denied Nike’s motion.” Alternatively, the Board denied entry of the substitute claims because Nike failed to establish that the substitute claims were patentable over the prior art of record. The Federal Circuit agreed with the Board holding that “the Board did not err by placing the burden on Nike to establish patentability over the prior art of Nike’s proposed substitute claims.”
Another Obviousness Analysis Refresher: The Failure of the Prior Art to Recognize the Problem Solved by Patentee May Support a Finding that the Claimed Invention is NOT Obvious. A claim is not patentable when “when “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art.” 35 U.S.C. § 103. The court reminded us that “[t]he ultimate determination of obviousness under § 103 is a question of law based on underlying factual findings. In re Baxter Int’l, Inc., 678 F.3d 1357, 1361 (Fed. Cir. 2012) (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)). These underlying factual considerations consist of: (1) the “level of ordinary skill in the pertinent art,” (2) the “scope and content of the prior art,” (3) the “differences between the prior art and the claims at issue,” and (4) “secondary considerations” of non-obviousness such as “commercial success, long-felt but unsolved needs, failure of others, etc.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,406 (2007) (quoting Graham, 383 U.S. at 17–18).” Once again, the court emphasized that an obviousness inquiry requires examination of all four Graham factors and that an obviousness determination can be made only after consideration of each factor. Finally, the court reminded us that “In KSR, the Supreme Court instructed that “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” 550 U.S. at 420.” The court agreed with the PTAB that, unlike in cases where the prior art has not appreciated the problem, here, because the two prior art references of record recognized the problem solved by Nike, combining the two references was obvious to one of ordinary skills in the art. However, the court agreed with Nike that the PTAB failed to consider Nike’s arguments and evidence related to secondary consideration, namely that “that reducing waste was a long-felt need in the shoe manufacturing industry” and that the prior art failed to resolve this need. The opinion further reminds us that “[e]vidence of secondary considerations plays a critical role in the obviousness analysis because it serves as objective indicia of nonobviousness and “may often be the most probative and cogent evidence in the record. It may often establish that an invention appearing to have been obvious in light of the prior art was not.” Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538–39 (Fed. Cir. 1983).”
Drawings Themselves May Play a Key Role in Showing That the Written Description Requirement is Met. Here, Adidas contended that Nike’s substitute claims were not properly supported by the ’011 patent’s written description. “To adequately support the claims, the written description “must clearly allow persons of ordinary skill in the art to recognize that the inventor invented what is claimed.” Ariad, 598 F.3d at 1351 (internal quotation marks omitted).” “Substantial evidence supports a finding that the specification satisfies the written description requirement when the essence of the original disclosure conveys the necessary information—regardless of how it conveys such information, and regardless of whether the disclosure’s words are open to different interpretations.” Inphi Corp. v. Netlist, Inc., 805 F.3d 1350, 1354 (Fed. Cir. 2015).” After thoroughly analyzing Figs. 8 - 11 and the related description in the ‘011 patent, the court held that “substantial evidence supports the Board’s decision that the proposed substitute claims are adequately supported by the written description of the ’011 patent.”
The entire Federal Circuit’s opinion may be accessed here: http://www.cafc.uscourts.gov/sites/default/files/s14-1719_Opinion_2-9-2016.pdf
About our firm: We are a boutique intellectual property firm with a focus on patent and trademark prosecution, offering IP services primarily at flat fee rates. We are based in Irvine, Orange County, California.
I. Kim PhD2/26/2016 8:47:51 PM
The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.More
The U.S. Supreme Court Will Review Claim Construction Standards and Institution Decision Reviewability.
In 2012, the Patent Trial and Appeal Board (PTAB or The Board) was formed, and petitioners have since then had the opportunity to challenge patents before the Board in inter partes review, covered business method review, or post grant review proceedings. Inter partes reviews have been relatively successful for petitioners, as approximately 70% of petitions have been instituted, and of those, about 90% of those petitions have resulted in at least one canceled patent claim. One of the factors behind the petitioners’ success rate is the “broadest reasonable interpretation” (BRI) standard that is the claim construction standard in inter partes review.
BRI, applied by the Board, is not the same standard applied by the district courts. The district courts apply the standard of “plain and ordinary meaning,” as set forth in Phillips v. AWH Corp., and is a narrower standard.
The Supreme Court granted certiorari, a review of a decision by a lower court, in Cuozzo Speed v. Lee in January 2016 to review the Federal Court’s decision upholding the Board’s use of the BRI standard. Cuozzo, the petitioner, maintained that the Board’s BRI standard is improper and that the Board’s decision to institute trial be reviewable on appeal. The Supreme Court will review these issues of whether it is appropriate for the Board to use a different claim construction standard than that used in federal district court, and whether an institution decision could be subject to judicial review. As written in the petition for certiorari:
“1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.
2. Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.”
The Supreme Court’s decision of the second issue at hand may have a large impact. By applying the BRI standard, the Board broadens the scope of patent claims during interpretation, which may lead to the claims being more susceptible to invalidation. Other problems may arise by there being two standards, which could lead to some inconsistency in the interpretation of patent claims.
Iris Kim, PhD3/25/2016 8:34:14 PM
Challenging a Claim’s Validity with Different Standards of Claim ConstructionMore
In September 2015, the Patent Trial and Appeal Board (“Board” or “PTAB”) denied institution of an inter partes review (IPR), in case IPR2015-00858, regarding patent 7,030,149. The IPR was requested by Ferrum Ferro Capital, LLC (the “Petitioner”) of claim 4 of the ‘149 patent, owned by Allergan Sales, LLC (the “Patent Owner”).
The Petitioner identified several related proceedings. In particular, the Petitioner cited the Federal Circuit decision, Allergan v. Sandoz, 726 F.3d 1286 (Allergan, Fed. Cir. 2013, Ex. 1012, 726 F.3d at 1293–96), in which claim 4 was not found to be invalid as obvious. Although this claim was upheld in the Federal Circuit decision, the Petitioner still attempted to challenge the validity of the claim. The Petitioner likely relied on there being differences between the broadest reasonable interpretation (BRI) claim construction used by the Board and the Phillips standard (which applies “ordinary and customary meaning”) used by the Federal Circuit. If the Board had proceeded with the IPR, then a much broader reading of the challenged claim would have been used than when it was looked at in the Federal Circuit. Many have cited this as one of the reasons why IPR has become a widely used for challenging patent validity, as applying BRI typically means that it is more likely to find a patent invalid than valid.
In the case of the ‘149 patent, however, the Board ultimately decided that the Petitioner did not establish a reasonable likelihood of prevailing with respect to claim 4, and denied the request. The ‘149 patent is directed to “topical ophthalmic use of brimonidine in combination with timolol for the treatment of glaucoma or ocular hypertension” (IPR2015-00858). The Petitioner contended that claim 4 would have been obvious over DeSantis in view of Timmerans and in further view of Larsson and Stewart, and supported their position with a declaration. Claim 4 “recites a ‘method of reducing the number of daily topical ophthalmic doses of brimondine… from 3 to 2 times a day without loss of efficacy’ in the treatment of glaucoma or ocular hypertension” (emphasis added). That is, the application of the medication two times a day is as effective as application of three times, if timolol is added.
“In Bristol-Myers Squibb, the Federal Circuit stated that ‘[n]ewly discovered results of known processes directed to the same purpose are not patentable because such results are inherent.’ In this context, the court stated that claim limitations that merely recite a newly discovered result of a known process ‘do not distinguish those claims over the prior art’” (IPR2015-00858). Citing this as well as the earlier Allergan Federal Circuit case in IPR2015-00858, the Petitioner contended that the phrase “without loss of efficacy” was not a claim limitation, due to the fact that the broadest reasonable interpretation standard used by the Board is broader than the Phillips standard used in the Federal Circuit. “Petitioner also asserts that ‘without loss of efficacy’ recites an intended result of practicing the method as claimed, not a step of the claimed method, and, therefore, should not be given patentable weight” (IPR2015-00858).
The Petitioner argued that, in the Federal Circuit Allergan case, the majority in the case considered “without loss of efficacy” to be a claim limitation while the dissent did not consider it to be so. The Petitioner considered this to mean that the majority and dissent applied different claim construction to claim 4. The dissent considered claim 4 to only include a single limitation, a step: “applying a fixed combination of 0.2% brimonidine and 0.5% timolol twice a day.” The dissent then stated that the “method of applying a fixed combination of 0.2% brimonidine and 0.5% timolol twice a day would therefore have been obvious over the prior art” (Allergan). The Petitioner argued that the dissent was applying BRI, and therefore, the claim should be found to be invalid when using BRI.
The Patent Owner responded by stating that the Petitioner wrongly argued that the dissent “adopted a different claim construction from the majority in which the language ‘without loss of efficacy’ appearing in the claim was not a limitation and could be ignored” (IPR2015-00858). The Patent Owner contended therefore that the majority and dissent had indeed both adopted the same claim construction. The Board agreed with the Patent Owner that result of “without loss of efficacy” is a limitation.
With respect to the Petitioner’s argument of Claim 4 being obvious, the Board stated in its decision, “Even assuming Petitioner persuaded us that Stewart disclosed that reducing a dose of 0.2% brimonidine from three times to twice daily resulted in ‘no difference in intraocular pressure effects’ in some fashion, as Petitioner and its expert witness contend in a conclusory manner… that disclosure would not establish sufficiently that reducing the number of doses of a single composition comprising 0.2% brimonidine and 0.5% timolol from three to two times daily would have resulted necessarily in no loss of efficacy in the treatment of glaucoma or ocular hypertension” (IPR2015-00858).
The decision by the Board not to institute IPR concluded with, “Considering Petitioner’s arguments and cited evidence of record before us, Petitioner does not establish sufficiently that the “without loss of efficacy” limitation is an inherent property or a necessary result of administering the composition as recited in claim 4” (IPR2015-00858).
Although this request for inter partes review was denied, IPR still remains a popular strategy for petitioners challenging the validity of patents due to the claim construction being broader in the PTAB than in the Federal Circuit. There remains a debate regarding the differences between the BRI and Phillips standards, however. Another major discussion about these standards will be coming soon, with the Supreme Court accepting the review of the case of Cuozzo Speed Technologies v. Lee scheduled on April 25, 2016.
About CIONCA Law Group P.C.: We are an Orange County, CA based intellectual property law firm with a focus on patent and trademark prosecution, offering IP law services at flat fee rates.
Marin Cionca5/17/2016 8:57:23 PM
Patent Claims Rejection Based on InherencyMore
Patent claims are often rejected by USPTO examiners on the ground that a property or characteristic of the claimed invention is inherent and thus not novel or, alternatively, obvious. In either case, if true, the invention is not patentable. However, often times, the examiner’s statements are pure conclusory statements with no support in any sound analysis or articulated reasoning. The Manual for Patent Examination Procedure (MPEP) cautions however against this type of impermissible practice.
MPEP 2141: DISCLOSED INHERENT PROPERTIES ARE PART OF “AS A WHOLE” INQUIRY
MPEP 2141 gives an example of a case where, if looking at the claimed invention as a whole, the apparently “inherent” characteristic may not bar patentability. Referring to the facts of that case it states in part that “the prior art did not recognize that treatment capacity was a function of the tank volume to contractor ratio, and therefore the parameter optimized was not recognized in the art to be a result-effective variable.” In re Antonie, 559 F.2d 618, 620, 195 USPQ 6,8 (CCPA 1977). It should be noted here that the failure of the prior art was contrasted with the contribution of the inventor to recognize the allegedly inherent characteristic, and the inventor was rewarded for that.
MPEP 2112: EXAMINERS MUST PROVIDE RATIONALE OR EVIDENCE TENDING TO SHOW INHERENCY
“In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Inter. 1990) (emphasis in original); The fact that a certain result or characteristic may occur or be present in the prior art is not sufficient to establish the inherency of that result or characteristic. In re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993) citing In re Oelrich,666 F.2d 578, 581-82, 212 USPQ 323, 326 (CCPA 1981); (reversed rejection because inherency was based on what would result due to optimization of conditions, not what was necessarily present in the prior art).
Examiners sometimes seem to ignore the above provisions of MPEP 2112 and provide no facts, technical reasoning or any rationale as to why the alleged inherent property “necessarily flows from the teachings of the applied prior art.” They simply write a conclusory statement or attempt to support the conclusion of inherency using inventor’s own teachings, which is often impermissible hindsight.
As such, examiner’s statements made in office actions have to be scrutinized for errors such as the ones above and appropriate response filed with the USPTO, challenging examiner’s erroneous contentions.
Iris Kim, PhD6/1/2016 7:04:50 PM
The Patent Trial and Appeal Board Designates Five More Decisions as PrecedentialMore
The Patent Trial and Appeal Board (PTAB or the Board) designated its first precedential decision in 2014, SecureBuy LLC v. CardinalCommerce Corporation, CBM 2014-00035, Paper 12 (April 25, 2014), which concerned the statutory requirements for instituting a covered business method (CBM) patent review. At the beginning of the 2016 year, the Board designated two more, which can be read about here.
In May 2016, five more decisions were designated as precedential, bringing the total of PTAB Precedential Decisions to eight. The five that have most recently been given the precedential designation are the following:
Garmin Int’l v. Cuozzo Speed Techs LLC, IPR2012-00001, Paper 26 (Mar. 5, 2013): This decision involves the factors to be considered when evaluating motions for additional, non-routine discovery in inter partes review proceedings. Prior to being designated as precedential, this decision was marked as “informative.” PTAB decisions are designated as either precedential, informative, representative, or routine.
Bloomberg, Inc. v. Markets-Alert Pty, Ltd., CBM2013-00005, Paper 32 (May 29, 2013): Like the first case, this decision also deals with the factors considered when evaluating motions for additional discovery, but in CBM patent review proceedings.
Oracle Corp. v. Click-to-Call Techs., LP, IPR2013-00312, Paper 26 (October 30, 2013): This decision involves a rule stating that an inter partes review cannot be instituted if the petition was filed more than one year after the date when the complaint was served, and deals specifically with the interpretation of the phrase “served with a complaint.”
MasterImage 3D, Inc. v. RealD Inc., IPR2015-00040, Paper 42 (July 15, 2015): This decision involves clarifying the standard for patent owner Motions to Amend. The patent owner has the burden to show entitlement to substitute claims, and this decision defined “prior art of record” and “prior art known to the patentee.” Previously, this decision was designated as representative.
Lumentum Holdings, Inc. v. Capella Photonics, Inc., IPR2015-00739 (Paper 38) (March 4, 2016): This decision involves the requirement that petitions should name all of the interested parties, and the fact that changes during a proceeding can be corrected.
Marin Cionca9/6/2016 9:26:12 PM
Patent Case Law: New Example of Software as Patentable Subject MatterMore
On June 27, 2016, the United States Court of Appeals for the Federal Circuit (“appeal court”) has decided another case, part of a group of four post Alice cases, which found patent eligible subject matter in the challenged patent. The patent at issue (U.S. Pat. 5,987,606) in this case (BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC) was directed to a process for filtering content over the Internet. According to the appeal court, the inventive concept of step two of the Supreme Court’s Alice analysis was successfully provided by a specific “ordered combination” of conventional steps, because it provided a solution the prior art content filtering processes and systems failed to provide.
The representative claim (Claim 1) of the disputed patent reads as follows:
1. A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:
a local client computer generating network access requests for said individual controlled access network accounts;
at least one filtering scheme;
a plurality of sets of logical filtering elements; and
a remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filtering scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.
At the district court level, the court found that the claim recited an abstract idea of “filtering Internet content” which was not limited by an inventive concept because the claims elements individually and in combination were conventional and routine. One argument advanced by BASCOM, which failed, according to the district court, was that “the inventive concept is found in the “ordered combination” of the limitations: a “special ISP server that receives requests for Internet content, which the ISP server then associates with a particular user and a particular filtering scheme and elements.” In a somehow convoluted manner, the appeal court agreed with Bascom, distinguishing cases such as Ultramercial (Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) and finding that this case is more analogous with DDR (DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)). As in DDR, the appeal court appeared to see the claimed invention an improvement of the computer technology itself, even though it was accomplished with conventional steps or well-known computer technology. The ordered combination seems to have been enough, in the eyes of the court, even though it consisted of routine, conventional or well-known elements.
What this decision appears to be teaching is that even though all claim elements are well-known or routine, a specific, ordered combination of such elements may still overcome a 101/Alice challenge. To be successful however, when mounting such argument, the specification and the claims may need to provide enough basis to show that the claimed invention improves the computer technology itself, in certain aspects. It should be noted that what was addressed in this appeal was only the eligibility (101/Alice) question. It still remains to be seen if this patent will survive the 102/novelty and 103/challenges, given the conventionality of the claim elements, individually.
Entire court opinion can be found at:
Marin Cionca9/15/2016 9:47:39 PM
Patent Law Alert: Federal Circuit Opens Door for More Software PatentsMore
On September 13, 2016, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) has decided another case, McRO (d.b.a. Planet Blue) v. Bandai Namco Games (“Planet Blue”) involving two software patents covering the same technology. It is another post-Alice case in a series of cases signaling that the Federal Circuit is determined to continue to narrow the scope of Alice (Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2355 (2014)). This is good news for inventors, patent applicants and patent owners in the software industry. Particular to the Planet Blue case is what appears to be an opening for software inventions which do not necessarily improve the computer technology “itself,” but instead improve other technological processes, for example, by automating them using software.
First, on December 5, 2014, in DDR Holdings, LLC v. Hotels.com, L.P., the Federal Circuit found that “systems and methods of generating a composite [hybrid] web page that combines certain visual elements of a “host” website with content of a third-party merchant” were not an abstract idea and were thus patentable subject matter. That was because the claimed solution was “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”
Next, on May 12, 2016, in ENFISH, LLC v. MICROSOFT Corp. et al., the Federal Circuit did not find a computer database model using a “self-referential table” an abstract idea, and thus, it was patentable subject matter. The court concluded that the disputed claims were “directed to a specific improvement to the way computers operate, embodied in the self-referential table.”
On June 27, 2016, In BASCOM GLOBAL INTERNET v. AT&T MOBILITY LLC, the Federal Circuit decided that it was not an abstract idea to provide a process for filtering content over the Internet by placing the filtering software on the server instead of the client computer and allowing customization by each user, after login, of the filtering software. The court appeared to see the claimed invention an improvement of the computer technology itself, even though it was accomplished with conventional steps or well-known computer technology.
It should be noted that all of the above cases appear to have a common thread, that is improvement in computer technology.
PLANET BLUE CASE
The Planet Blue case involved two patents directed to 3-D animation technology using software and computers. The patents relate to automating part of a preexisting 3-D animation method. “As explained in the background of the patents, the admitted prior art method uses multiple 3-D models of a character’s face to depict various facial expressions made during speech. To animate the character as it speaks, the [prior art] method morphs the character’s expression between the models.” Using the prior art method, animators, using a computer, manually determined the appropriate morph weight sets for each of the established key-frames based on the phoneme timings in a timed transcript. “Because the pronounced phoneme and drawn keyframe corresponded in time, this prior art process synchronized the lips and facial expression of the 3-D character.”
The claimed invention automates a 3-D animator’s tasks, specifically, determining when to set keyframes and setting those keyframes, by using rules that are applied to the timed transcript to determine the morph weight outputs. The claimed process produces more accurate and realistic lip synchronization and facial expressions in animated characters.
The Federal Circuit agreed with the patent owner and analogize this case with Diamond v. Diehr, 450 U.S. 175 (1981) (“Diehr”), finding that the algorithm and rules used improve an existing technological process (3-D animation technology), and that the rules used are specific enough to “prevent preemptionof all processes for achieving automated lip-synchronization of 3-D characters.” As such, the claimed process was not an abstract idea; it was patentable subject matter.
The Planet Blue case appears to be the first post- Alice case in which non-computer technology improving software was found to overcome the abstract idea challenge. The key seems to be to be able to show that (1) some technology is improved and (2) that preemption of all processes for achieving the same result is prevented by the way the patent claims are drafted.
Marin Cionca2/21/2017 12:30:52 AM
Software Patent Law Update: Federal Circuit Finds Graphical User Interface PatentableMore
Since June 2014 when the Alice case was decided by the US Supreme Court, which held that certain software is just an “abstract idea” and thus not patentable, software patents faced an uphill battle when comes to procurement or enforcement. However, during the following years, the Federal Circuit Court decided several software patent cases that provide more clarity regarding the scope of the Alice case and arguably more hope for software patents. Such cases include Enfish and Bascom which we discussed here on our blog in separate articles. A new decision, also favorable to the software patents was issued by the United States Court of Appeals for the Federal Circuit (Federal Circuit) on January 18, 2017 in TRADING TECHNOLOGIES INTERNATIONAL, INC., v.CQG LLC. Although this decision is non-precedential, it addresses a specific aspect of software, namely the graphical user interface (GUI), and an example of what can make a GUI patentable. For that reason, the discussion of this case is warranted.
Summary of The Case
Trading Technologies asserted against Cog U.S. Patents No. 6,772,132 (“the ’132 patent”) and No. 6,766,304 (“the ’304 patent”), which “describe and claim a method and system for the electronic trading of stocks, bonds, futures, options and similar products. The patents explain problems that arise when a trader attempts to enter an order at a particular price, but misses the price because the market moved before the order was entered and executed. It also sometimes occurred that trades were executed at different prices than intended, due to rapid market movement. This is the problem to which these patents are directed.” The patents describe a solution including a trading system in which a graphical user interface “display[s] the market depth of a commodity traded in a market, including a dynamic display for a plurality of bids and for a plurality of asks in the market for the commodity and a static display of prices corresponding to the plurality of bids and asks.” The court agreed with the district court which held that the claims are not directed to an abstract idea and also that they recite an inventive concept, such that the subject matter is patent-eligible under 35 U.S.C. § 101 (i.e., is not an abstract idea).
At district level, the court first applied Step 1 of the two-step analysis under Alice. The Federal Circuit court agreed with the district court that, rather than reciting “a mathematical algorithm,” “a fundamental economic or longstanding commercial practice,” or “a challenge in business,” the challenged patents “solve problems of prior graphical user interface devices...in the context of computerized trading relating to speed, accuracy and usability.” The district court further held, and the Federal Circuit court agreed, that these patents are directed to improvements in existing graphical user interface devices that have no “pre-electronic trading analog,” and recite more than “‘setting, displaying, and selecting’ data or information that is visible on the [graphical user interface] device.”
The district court alternatively continued the analysis under Alice Step 2, and it concluded that the specific structure and concordant functionality of the graphical user interface provides the inventive concept that makes the invention more than an abstract idea.
This case is another good news for software patents. One lesson learned here is that software inventions have to be looked at carefully, module by module, aspect by aspect, including the general user interface. An identified technological improvement in any of the modules may be enough to escape an Alice-abstract idea challenge from a patent examiner at USPTO or an infringer of the patent in patent litigation.
Marin Cionca4/25/2017 9:48:49 PM
Monetization of Patents: How to Make Money with PatentsMore
People and clients often ask me how can they make money with an invention or with a patent if they were to pursue one. Or, they ask, I now have the patent, what can I do next to make money with it? Here are some answers:
Start a business.If you have entrepreneurial experience and/or inclinations as I do, and the necessary time and funds, I recommend starting a business. Nobody believes more in the product you have invented than you do. Especially if the cost of making it is accessible, make it, put up a website, use other online platforms such as Amazon, and start selling. Even if you will not afford to enforce the patent through litigation, the patent you have can give you other important market advantages. For example, it can be used to deter the competition to copy your product and at least force them to spend the time and money to design around if they want to compete. As another example, a patented product often sells better than a non-patented product. Consumers often perceive a patented product to be a superior product. One benefit of making and selling the patented product is that you’ll get feedback from consumers that may inspire you to improve your product even more and come up with further and better version, some of which may be patentable on their own. If not the original patented version, the further iterations may be a market winner.
Grow an existing business.For similar reasons as above, a patent product can be a great addition to your line of existing goods or services. Having patented products in your product line may show the consumers and the market that you are a serious business. That market image may be very valuable to your business success. Further, being a valuable business asset, a patent can be used in many business dealings such as merger and acquisitions, sale of the business, strategic alliances, investor or loan agreements for access to cash, etc.
License or Assign your Patent.If you do not have an existing business and you are not in the mood to start one, licensing may be an option. This is not easy, but I saw it happening. Finding an interested party (e.g., a manufacturer) takes a lot of time and effort. Manufacturers or seller of similar products as your patented product are likely the best targets of licensing efforts. I typically recommend that you reach out to potentially interested patent licensees yourself. In any case, be very skeptical and do your own due diligence when approached by invention promotion companies or individuals that promise to market your invention or patent, while you just sit back and relax! Ask about their success rate, examples of success, milestones, etc. I had clients coming to me very disappointed with this type of entities. Basically, they were asked to continue to pay according to contractual obligations without seeing any results. Again, I recommend making these efforts yourself. Patent attorneys like myself can’t typically assist finding interested parties, but what once such party is identified, we can assist with negotiations and licensing or patent assignment agreements.
Sell your Patent.There are apparently patent brokers and online platforms that purportedly offer to sell your patent for a fee. I am not very familiar with them, but they and their services may be worth exploring.
CIONCA - Staff6/15/2017 5:32:14 PM
Patent Law: Challenging the Patent Claim Definiteness RequirementMore
Patent Law: Challenging the Patent Claim Definiteness Requirement
On June 12, 2017, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) has issued a decision regarding the dispute between One E-Way, Inc. and the International Trade Commission (“ITC”). The case was triggered by One E-Way, Inc.’s initial accusation against Respondents Sony Corporation, Sony Corporation of America, Sony Electronics, Inc., Blueant Wireless Pty, Ltd., Blueant Wireless, Inc., Creative Technology, Ltd., Creative Labs, Inc., and GN Netcom A/S (“Respondents”) of two incidents of patent infringement, among other accusations. Previously, at the ITC level, the patent law case concluded with the International Trade Commission’s ruling that in the asserted patent the claim language “virtually free from interference” was indefinite. One E-Way, Inc. appealed the ITC decision in this case, One E-Way, Inc. v. International Trade Commission.
One E-Way, Inc. v. Respondents addressed the patent claims outlining One E-Way’s design of “a wireless digital audio system designed to let people use wireless headphones privately, without interference, even when multiple people are using wireless headphones in the same space.” The following is an excerpt from a representative One E-Way’s patent claim:
“a module adapted to reproduce said generated audio output, said audio having been wirelessly transmitted from said portable audio source virtually free from interference from device transmitted signals operating in the portable wireless digital audio system spectrum”
Both parties argued over whether or not “virtually free from interference” meets the definiteness requirement. The ITC’s final decision deemed the phrase as indefinite. In turn, One E-Way appealed the Commission’s decision, relaying the case to the Federal Circuit as One E-Way, Inc. v. International Trade Commission.
Intrinsic evidence heavily served as the basis for the Federal Circuit’s decision in this patent case. Throughout the patent, it is repeatedly reported that private listening is “without interference.” The Federal Circuit held that, “[t]aken together, the specification makes clear that private listening is listening without interference from other users…the interference would cause one use to hear another user’s wireless transmissions, potentially interfering with the utility of a device.” Referring to a parent patent, “the applicant explained that the term ‘virtually free from interference’ results in the ability to listen without eavesdropping,” implying that that eavesdropping “is consistent with the purpose (‘private listening’) and mechanisms (separation of users by recognizing other transmissions as ‘noise’) disclosed in the patents.” Applicant also argues that interference is used as a non-technical term, dodging the requirement of defining concise boundaries. Lastly, “free from interference”—virtually eliminated—simply signifies that the functionality is “a little bit better than ‘virtually free from interference,’” but both straightforwardly imply private listening. Therefore, the Federal Circuit ruled in One E-Way’s favor: “virtually free from interference” satisfies the patent claim definiteness requirement, reversing the International Trade Commission’s previous decision. However, Chief Judge Prost dissented, expressing that intrinsic evidence alone should not have sufficed in demonstrating definiteness. Furthermore, Prost adds that the majority’s argument provided no clarification on the necessity of virtually—it neither broadens nor adds certainty to the patent claim scope.
The One E-Way, Inc. v. International Trade Commission case demonstrates again the importance of language terms used in crafting patent claims. It also shows once again that the effort of choosing the right patent claim terms is more an art than a science. Reasonable minds can differ when construing the meaning of patent claim terms. While virtually or similar terms may be used to for example attempt to make the patent claim scope broader (i.e., positive), their use may also expose the patent claim to a claim indefiniteness challenge (i.e., negative).
Full One E-Way, Inc. v. International Trade Commission decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-2105.Opinion.6-8-2017.1.PDF
CIONCA - Staff6/28/2017 8:26:07 PM
Patent Law: Conditions Precedent May Expose Method Claim to Broad Interpretation During ProsecutionMore
On April 28, 2016, a decision was made by PTAB in Ex parte Schulhauser, an application apparently owned by Medtronic Inc.The Appelants sought a review of the Examiner’s decision to reject claims regarding “subject matter relate[d] to ‘medical devices for monitoring physiological conditions and, in some embodiments, to a minimally invasive implantable device for monitoring a physiological conditions [sic] and detecting the onset of a critical cardiac event such as a myocardial infarction.” Claims 1-11 were rejected.
Upon review of the Examiner’s decision, PTAB (Patent Trial and Appeal Board) decided to affirm the rejections of Claims 1-10 and reverse the rejection of Claim 11.
For reader’s reference, Claim 1 is included below. The Board held that some limitations of a claimed method are not considered to have patentable weight since those steps require precursors. In other words, a condition precedent must be met in order for these steps to take place. For example, “determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardiac criteria,” communicates that this step would only be executed once the condition is met. However, whether the condition is met or not, the claimed method remains unaffected. Because additional steps are conditioned, mutually exclusive, and neither inhibit nor advance the claimed method, they carry no patentable weight. Because prior art disclosed such a method, the Claim’s rejection was affirmed.
While the method claims remained rejected, PTAB did make the decision to reverse the Examiner’s rejection of Claim 11, which was directed to a “system for monitoring cardiac conditions [including] various ‘means for’ limitations involving functions substantially similar to those recited in claim 1.” Although the limitations provided for the system are similar to those provided for the method, they are patentable in the system’s case because the system must have the capability of performing such processes if needed. As stated in the opinion, “the system claim differs from the method claim because the structure…is present in the system regardless of whether the condition is met and the function is actually performed.” In comparison to prior art, the claimed system necessitates a certain order of operations while the prior art does not disclose any such essential order. While the system may perform the same functions as prior art, it does so in a distinct way.
1.A method for monitoring of cardiac conditions incorporating an implantable medical device in a subject, the method comprising the steps of:
collecting physiological data associated with the subject from the implantable device at present time intervals, wherein the collected data includes real-time electrocardiac signal data, heart sound data, activity level data and tissue perfusion data;
comparing the electrocardiac signal data with a threshold electrocardiac criteria for indicating a strong likelihood of a cardiac event;
triggering an alarm state if the electrocardiac signal data is not within the threshold electrocardiac criteria;
determining the current activity level of the subject from the activity level data if the electrocardiac signal data is within the threshold electrocardic criteria;
determining whether the current activity level is below a threshold activity level;
comparing the tissue perfusion data with a threshold tissue perfusion criteria for indicating a strong likelihood of a cardiac event if the current activity level is determined to be below a threshold activity level;
triggering an alarm state if the threshold tissue perfusion data is not within the threshold tissue perfusion criteria; and
triggering an alarm state if the threshold tissue perfusion data is within the threshold tissue perfusion criteria and the heart sound data indicates that S3 and S4 heart sounds are detected,
wherein if an alarm state is not triggered, the physiological data associated with the subject is collected at the expiration of the preset time interval.
PTAB’s decision in Ex parte Schulhauser magnified in a way the difference between a method and a system patent claim. Although both include limitations, some with conditions precedent, a system’s structure is a more concrete entity that must include the capabilities of addressing all limitations in order to function properly, whereas a claimed method may be interpreted more broadly by the patent examiner, namely, independently of its limitations that include conditions precedent. It is important to consider these differences upon writing claims to create optimal patent protection.
Full Ex parte Schulhauser decision can be read here: https://www.uspto.gov/sites/default/files/documents/Ex%20parte%20Schulhauser%202016_04_
CIONCA - Staff8/9/2017 5:39:58 PM
Patent Case Study: The Novelty Of An “Invention” Is NOT Enough To Make It PatentableMore
On July 26, 2017, a decision was made by the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) in Soft Gel Technologies, Inc. v. Jarrow Formulas, Inc. Soft Gels—in a sequence of a parent patent, a continuation, and a continuation-in-part patent for (1) a soft gel capsule, (2) a solubilized coenzyme Q-10, and (3) a method for preparing a soft gel capsule. After it was established that the Q-10 coenzyme was beneficial to the human body, Soft Gels saw “a need in the art for an improved methodology to deliver increased amount[s] of bioavailable CoQ-10 to an individual in need thereof.” Therefore, Soft Gels created an oil mixture solvent containing d-limonene and gel capsule for the coenzyme. In 2012, Jarrow Formulas, Inc. requested an inter partes reexamination of all three patents. Reexaminations of all three were ordered, and the assigned examiner issued rejections for each set of claims based on grounds of obviousness.
With five key prior art references to consider, the Patent Trial and Appeal Board (PTAB, Board) rejected a number of Soft Gel’s patent claims. The first reference was to Patent Application of Motoyama (“Motoyama”). Motoyama claims “an oral formulation containing CoQ10 dissolved in an oil.” This patent application makes evident that the bioavailability of the coenzyme to the bloodstream significantly increases when mixed with an essential oil and ingested orally with a capsule. The next two references—another patent and a dissertation—express the observation that CoQ10 has poor solubility in aqueous solvents, leading to the idea of mingling the coenzyme with an oil mixture solvent instead prior to introducing it to the body. The fourth reference the Board relied upon, Fenaroli’s Handbook of Flavor Ingredients, “notes that lemon essential oil has many different components, but ‘contains approximately 90% limonene.’” The fifth and final reference the Board considered was Some Naturally Occurring Substances: Food Items and Constituents, Heterocyclic Aromatic Amines and Mycotoxins (1993), “a monograph…[stating] that limonene is ‘the most frequently occurring natural monoterpene.’” Overall, the Board found that Soft Gel’s claimed patents were simply a reconstruction of the prior art. Furthermore, the Board also concluded that “a person of skill in the art would have been motivated to combine those references and would have had a reasonable expectation of success in doing so.” A number of Soft Gel’s patent claims were rejected upon this reexamination. Soft Gel appealed to the Federal Circuit.
First, Soft Gel sought to “[challenge] the Board’s factual finding that d-limonene is the main constituent of lemon oil.” Soft Gel attempted to refer to an experiment that yielded a sample of lemon oil species that only contained 38.1% limonene content. However, this was only one of nineteen samples, and the limonene content among samples varied from 38.1% to 95.8%. Therefore, this reference did not help in supporting Soft Gel’s contention . Second, Soft Gel argued that the second reference used against them only addressed the melting of CoQ10 from a solid to a liquid, only concerning itself with state of matter rather than dissolving the coenzyme in essential oils. However, the Federal Circuit decided that the patent referenced “teaches the use of essential oils to make CoQ10 more available to the body, which is precisely what is claimed in the Soft Gels patents.” Third, Soft Gel tried to make a distinction between lemon oil and peppermint and spearmint oils by citing an experiment in which essential oil performance was tested when combined with the coenzyme and emulsifiers. Although lemon oil caused the CoQ10 to re-melt, it simply performed better than the spearmint and peppermint oils, which does not imply that it “behaved in an entirely different manner.”
For the aforementioned reasons, the Federal Circuit affirmed the Board’s decision.
This case is another example of instances when a combination of prior art elements is novel, yet not patentable because the combination would have been obvious to a person of ordinary skills in the art (POSITA) at the time the application for patent was filed. Particularly in this case the combination was obvious because “a person of skill in the art would have been motivated to combine those references and would have had a reasonable expectation of success in doing so.”
Full Soft Gel Technologies, Inc. v. Jarrow Formulas, Inc.decision can be found here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-1814.Opinion.7-24-2017.1.PDF
CIONCA Staff8/20/2017 3:16:11 PM
CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably SuedMore
CIONCA on Patents: Think Twice Before Suing for Patent Infringement and Fight Back when Unreasonably Sued
On July 5, 2017, the Federal Circuit made a decision in , LLC v. Newegg. In July 2010, sued Newegg and other defendants for patent infringement, the subject matter being rotatable computer-mounted camera clips and their means of rotation. A Markman (i.e., patent claim construction) hearing was held in April 2012, which the Court found that case was baseless. While the cases against most other defendants were dropped afterwards, continued the litigation against with Newegg. However, requested for dismissal without prejudice, and Newegg moved for an exceptional case shortly afterwards, stating that infringement accusations were baseless and in bad faith. The district court denied Newegg’s motion. Newegg later appealed in light of Octane Fitness, LLC v. Icon Health & Fitness, Inc., and the case was reassigned to a new judge. However, Newegg’s request for attorney’s fees was denied once again as the district court based their decision on the previous district judge’s analysis. Newegg timely appealed and the case was again before the United States Court of Appeals for the Federal Circuit.
In light of Octane Fitness, LLC v. Icon Health & Fitness, Inc., “[A]n ‘exceptional’ case is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” In regards to , LLC v. Newegg, the Federal Circuit ultimately reversed and remanded the case, articulating their belief that the district court abused its discretion. When instructed to gauge the case as ‘exceptional,’ the district court utilized previous findings rather than conducting a novel independent analysis, a course of action that should not have happened since some facts had changed since the case’s initial ruling. In addition, “its decision was based on ‘a clearly erroneous assessment of the evidence.’” Newegg’s product rotates on at least two axes, but claimed that “Newegg’s ball-and-socket joint limited the rotation to a single axis at a time.” This argument implies that although Newegg’s product utilizes multiple axes, it infringes on patent because both products rotate on a single axis at all times, regardless of whether it is one of one axis or one of multiple axes. However, failed to provide evidence to support their argument, and it was established that Newegg’s camera clip does not infringe on that ground. Moreover, throughout the progression of the case, “pattern of low and erratic settlements, though not determinative, reinforces a conclusion of unreasonableness.” In conclusion, the district court’s previous decision was reversed and the case remanded. Costs were ordered to be paid to Newegg.
Before taking action on asserting patent infringement claims, the patent owners must thoroughly analyze the extent of their patented claims. It is important to ensure that patent infringement accusations are not baseless, and that patent infringement evidence is prepared prior to filing a patent infringement case. This is because filing a baseless patent infringement patent exposes the patent owner to liability for attorney fees of the accused infringers. Furthermore, one should understand that patent claims must be carefully written to provide a clear scope of protection. Having clear, carefully-verbalized patent claims will make it easier to determine when legal action is appropriate.
Full , LLC v. Newegg decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/16-1882.Opinion.6-29-2017.1.PDF
staff9/15/2017 9:33:30 PM
Pictured above: Patent and Trademark Attorney Marin Cionca and Patent Agent Iris Kim in attendance at the OC Asian Business Expo
CIONCA IP Law Attends the OC Asian Business Expo
On September 12, 2017, we had the opportunity to attend the 7th Annual OC Asian Business Expo (OC ABE) at the Great Wolf Lodge in Garden Grove, California, where the Southern Californian Asian community embraces their increasing achievement in the business world. The lively event featured exhibitors from a wide range of areas, all representing successful and innovative OC Asian businesses. The OC ABE gives OC business owners the chance to strengthen their network and engage with their community, and local chambers of commerce take part in ensuring that the OC ABE is a success each year. The event provides a welcoming environment so all participants can actively build relationships and benefit from each other’s knowledge. For more information on the OC ABE, please visit http://www.theasianbusinessexpo.com/.
Also in attendance was SCORE, whom we proudly sponsor. SCORE is a nonprofit organization aiming to help small businesses flourish, and as a small business always seeking growth, we understand the importance of support. SCORE provides many services for the developing entrepreneur, such as mentoring, tools, and workshops. For more information on SCORE, please visit https://www.score.org/.
Other businesses represented include the Korean American Chamber of Commerce, the CalAsian Chamber of Commerce, East West Bank, Sumokey, Inline Four, El Aviso Magazine, Heartland Institute of Financial Education, and VIETV, among many others. All are growing businesses, and all businesses look forward to expansion. With that said, networking and IP protection (patents, trademark, copyrights) are both important in building a steady business.
staff9/27/2017 5:00:12 PM
Claim Indefiniteness During Patent Pre-Issuance: Define Your Invention, Not Just Your AudienceMore
On August 25, 2017, the Patent Trial and Appeal Board has decided Ex parte McAward. The case revolved around the patentability of James Gerard McAward’s invention of a “water leakage detectors...which are easily connectable to flexible water hoses, and, can be coupled together to monitor leakage from hot and cold supplies.”
Claims 1-20 were deemed indefinite, while Claims 1-7 and 10-20 were deemed unpatentable by the examiner in the Final Action because of lack of novelty and/or obviousness over prior art identified by the examiner. Appellants James Gerard McAward et al. sought review from the Patent Trial and Appeal Board.
The following is the excerpted Claim 1, chosen to represent Claims 1-20 as the rest stand or fall with the claim:
“1. A water detector comprising:
flow connectors carried by the housing including a spin-on female pipe connector at an inflow end and a spin-on male pipe connector at an outflow end;
at least one water presence sensor carried by the housing;
an electrically actuatable valve, carried by the housing, and having first and second states; and
control circuits, carried by the housing, coupled to the sensor and valve, and, responsive to a leakage indicating signal from the sensor, the circuits actuate the valve causing it to change state wherein the control circuits detect flood conditions, shut off a malfunctioning water branch to a home appliance and communicate to a premises alarm communication device or home automation system via a wireless link and wherein the water detector is configured to be reliable installed by an untrained installer or a homeowner and to not require the services of a plumber or electrician to perform installation, thereby permitting widespread and cost effective adoption.
The examiner challenged the “metes and bounds” of McAward’s invention, which according to the examiner were not clearly defined within Claim 1. Rather than providing additional description of the invention being claimed, McAward’s claim further describes the skill level required to utilize the apparatus by stating that the water detector is “configured to be reliably installed by an untrained installer or a homeowner and to not require the services of a plumber and cost effective adoption.” The language does not capture the structure of the invention. There is no language specifically claiming the subject matter.
Furthermore, it is claimed that no tools are needed for installation, but including this quality does not further describe the apparatus’s structure because it does not specify which tools are not needed. Again, rather than specifying the structure of the invention, the claim refers to the minimal skill level needed to utilize the invention. It is also noted that a “homeowner” can easily install the apparatus; however, a “homeowner” encompasses a varied collection of people who represent a wide range of skills.
In addition to the aforementioned points, Claims 1-7 and 10-20 were rendered unpatentable over the combined teachings of Walter (US 7,549,435) and Kaplan (US 7,403,839). McAward’s claimed water detector comprises “a housing [and] flow connectors carried by the housing including a spin-on female pipe connector at an inflow end and a spin-on male pipe connector at an outflow end.” Per the patent Examiner, Walter “fail[s] to explicitly show or teach the limitations wherein the flow connectors include ‘a spin-on female pipe connector at an inflow end and a spin-on male pipe connector on an outflow end’” but “it would have been obvious to modify the flow connections of the device of Walter to be ‘spin-on’ connectors...”
Furthermore, the patent Examiner found that the process of wireless communication to a remote device forewarning a possible flood was well known in the art, and states that “it would have been obvious ‘to use wireless communication in the device of Walter to allow remote and convenient wireless communication between the control module of the valve and a remote monitoring system, as it is taught by Kaplan” (19).
For the above reasons, the Patent Trial and Appeal Board affirmed the patent Office’s decisions of rendering Claims 1-20 as indefinite, and Claims 1-7 and 10-20 as unpatentable for being obvious.
The USPTO is responsible for ensuring that each patent clearly defines what is claimed so that other inventors are aware of where their patents’ boundaries lie. After being considered indefinite, a process is initiated during which the applicant has the opportunity to respond with amendments or evidence that the patent claims are sufficiently definite. Doing so in turn ensures that the rights gained through the patent are consistent with the inventor’s contribution to the field, and that the public seeking to invent have a clear understanding of what has already been done.
Full Ex parte McAward decision can be read here: https://www.uspto.gov/sites/default/files/documents/Ex%20parte%20McAward%202017_08_25.pdf
staff9/27/2017 5:12:07 PM
CIONCA - Patent and Trademark Law AttorneyMore
CIONCA Law Group P.C. has launched a TV advertising campaign in Orange County, California. The TV Ad below has played on Fox News, CNN, CNBC (including the Shark Tank show) and Discovery cable channels.
We hope you'll watch the video below and send us your feedback.
As always, since 2009, we are here to assist with any patent and trademark law matters you may have.
Staff9/28/2017 7:27:22 PM
Pictured above: IP Legal Secretary Beverly Ramos and Patent Agent Iris Kim in attendance at the SCORE 5th Annual Women Business Owners Conference
CIONCA IP Law Attends 5th Annual Women Business Owners Conference
On September 28, 2017, we had the opportunity to attend the 5th Annual Women Business Owners Conference at the Great Wolf Lodge in Garden Grove, California. The event provided an inspirational environment for all business owners, especially women. A variety of exhibitors made their way to the conference, ranging from jewelry producers and marketing agencies to financial advisors and college representatives. All exhibitors were given great collaborative and learning opportunities.
In addition to the networking benefits, the conference hosted a number of brilliant keynote speakers. The importance of networking and self-presentation was demonstrated by the knowledgeable Liz Goodgold of REDfire Branding, whose interactive talk allowed participants to experience proper networking skills for themselves. Afterwards, Lisa Nguyen of the Senhoa Foundation shared her story of how community service can become a driving force in nurturing your small business into a tremendous success. A wonderful talk was also given by CorpNet Founder Nellie Akalp, whose business is proof that starting small has its advantages towards competing against bigger companies.
The rewarding event was organized by SCORE, whom we proudly sponsor. SCORE is a nonprofit organization aiming to help small businesses flourish, and as a small business always seeking growth ourselves, we understand the importance of support and building strong relationships. SCORE provides many services for the developing entrepreneur, such as mentoring, tools, and workshops. For more information on SCORE, please visit https://www.score.org/.
Staff11/3/2017 4:20:04 PM
An Introduction to Provisional Patent ApplicationsMore
Provisional Application for Patent
A provisional application is a “placeholder” for utility patents. An inventor may file a provisional application first, and then file a non-provisional application up to twelve months later. There are three main advantages to filing a provisional patent.
First, a provisional application for patent allows the inventor to use the filing date of the provisional patent application when filing the non-provisional application several months later. This is the primary reason to file a provisional application. Because the USPTO operates now, after the 2011 America Invents Act -AIA, under a “first to file” standard, it is important to file an application for an invention as early as possibly to avoid the risk of someone else filing a similar/identical patent first. A provisional patent gives inventors the ability to establish an effective filing date as early as twelve months before they have a non-provisional application ready.
Second, it allows the inventor to use the term “Patent Pending” in the description of the invention. This is effectively allows the inventor to begin promoting the invention in a commercial setting with greater security against the possibility of theft.
Third, a provisional patent is considerably cheaper and simpler than its non-provisional counterpart. This means that if an inventor doesn’t quite have the funding to file a non-provisional application, or the fine details of the invention aren’t quite finished yet, the provisional patent still gives the inventor the ability to establish an earlier effective filing date.
It is important to note that the 12-month grace period is unchangeable. An applicant filing a provisional patent has exactly 12 months to file a non-provisional application for the patent, or the advantage of the early filing date is lost. Additionally, the non-provisional application must specifically reference the provisional application.
Sections/Requirements of a Provisional Application for Patent
The requirements for a provisional application are as follows:
1. A cover sheet that provides basic information regarding the inventor, invention, and attorney (if applicable).
2. A written description of the invention (background and summary).
3. A set of drawings, along with written explanations for each figure.
Formal drawings in a provisional application are not technically required, as the application is not examined based on merit. However, it is extremely helpful to have drawings that are as clear as possible, as it makes the process of filing the corresponding non-provisional application much smoother.
Once an application meeting these requirements is sent to the USPTO with the requisite filing fee and is approved, it will be given a filing date and a filing receipt will be sent to the applicant. If there is a deficiency in the application (the filing fee is missing, for example), the USPTO will inform the applicant and will not give the application a filing date until the errors are corrected.
Additional Considerations for a Provisional Application for Patent
As an inventor decides whether or not a provisional application is right for his or her needs, there are some things to keep in mind when preparing a provisional patent application.
Provisional applications are only accepted for utility patents. They may not be filed for design applications.
If there are multiple inventors associated with a patent, they must all have contributed to the invention, and their names must all be included in the application. Additionally, at least one of the inventors listed on the provisional patent must be listed on the corresponding non-provisional in order to receive the benefit of the early filing date.
Finally, in order for a non-provisional application to receive the benefit of the provisional patent, the claimed subject matter in the former must be supported by the description of the latter. To this end, it is important for the description of the invention in the provisional application to be as complete as possible.
11/10/2017 6:47:44 PM
An Introduction to Design Patent ApplicationsMore
Design Application for Patent
A design patent, as described by the US Patent and Trademarks Office, “consists of the visual ornamental characteristics in, or applied to, an article of manufacture.” This means that, while a utility patent deals with how a device works, a design patent focuses on how a device looks. If an inventor comes up with an original, unique design for the physical appearance of a device, the inventor is able to file a design patent.
It is important to understand what qualifies for a design patent and what does not. If the shape or surface design of an object is based on its function, it is not considered “ornamental” and does not qualify for a design patent. A milling machine, for example, has a shape defined by the need for the milling head to travel along various axes. This results in a design that is not ornamental and is not acceptable for a design patent. A design patent can be filed if the surface design of an object has no effect on the objects function, such as the shape of a Coke bottle. Finally, a design patent only protects the ornamental appearance of a device, not its function or structure. If you are seeking to protect the function of an invention, a utility patent will be necessary.
The design can relate to the whole device, a part of the device, or even something that is attached to the device. Whatever part of the device’s design the inventor wishes to patent, it must be made very clear which parts of the device are not included in the claimed design. There is a very simple method for differentiating the two, and it allows the inventor to show the design in its “environment” without confusing the examiner. Ensuring the examiner fully understands your application is important, otherwise the application will be rejected and will require modifications to the drawings before resubmission.
Due to the simplicity of a design patent compared to a utility patent, the cost of filing a design patent is about one-third the cost of filing a utility patent. Additionally, it’s much easier to get a design patent granted by the USPTO, partly because of the simplicity of the requirements.
Sections of a Design Application for Patent
A design application has six sections:
1) Preamble, which gives basic information regarding the application (applicant name, patent title, brief description, etc.).
2) Description of the figures presented in the drawing section.
3) A description of features (optional).
4) A single claim (design patents cannot have more than one claim).
5) Drawings (or photographs).
6) Executed oath or declaration.
When selecting a title for the application, it helps to choose one that describes the nature of the design. Using a “code name” does not help the examiner, or the general public, understand the purpose of the invention. A short, informative name is best.
The description of the figures, also known as the Specification, is usually simplified into a list that describes the view of each figure (isometric view, top view, etc.). Additional information is not required, as the drawings themselves are the best way to describe the design. The Specification section may also include additional information, such as descriptions of the design’s use (if that was not already covered in the preamble).
As mentioned above, design patents only have one claim, which defines the design “as shown.” If there is a specific verbal description of the design, the design is claimed “as shown and described.” As there are no other aspects of the patent other than the design, additional claims are not necessary.
The drawing section is the most important aspect of the design patent, and care should be taken to ensure every aspect of the design is visibly presented in this section. Generally, the drawing section should have a minimum of seven figures: top, bottom, front, back, left, right, and a perspective view. If two views are mirror images (left and right side of a chair, for example), it is acceptable to present only one figure, and state the mirror image nature of the two sides in the description of the figures. More complex designs will require more figures. If, for example, the design has moving components, perspective drawings should be included of the design in its various states of motion.
Drawings are required to use black ink on white paper.
Broken lines in a drawing are used to portray components that are not claimed in the patent, but are important aspects of the design’s “environment” that need to be displayed to better understand the design’s usage.
Submitting a Design Application for Patent
The actual process of applying for a design patent is relatively simple. The first step is to draft an application that includes all of the sections mentioned above, with emphasis on the drawing section. The application is then filed with the USPTO, along with the correct filing fee. Upon receiving both the application and fee, the Office assigns the application an Application Number and a Filing Date. The applicant is then sent a Filing Receipt that contains this and other relevant information. An examiner checks the application for adherence to filing rules and formalities, completeness and accuracy of the drawings, and compares the design with “prior art,” which constitutes all of the public information and filed patents prior to the filing date of the patent under examination. If the examiner feels that the design is patentable, then the application is considered “allowed,” and the applicant is given instructions on how to finalize the application process.
If the patent application is unclear, however, or if prior art shows that the claim is unpatentable, then the examiner will reject the patent and issue an Office Action to the applicant. The Office Action explains what aspects of the patent application were unsatisfactory, and tends to offer suggestions for rectifying these errors. A response is required from the applicant in a timely manner or the application will be considered abandoned. The applicant must address every error listed by the examiner for the application to be reconsidered.
Upon receiving the response, the examiner will review the changes and either withdraw the rejection or repeat it and make it “final.” If an application is rejected again in this way, the applicant my attempt to file an appeal with the Patent Trial and Appeal Board.
11/17/2017 1:24:20 PM
An Introduction to Patent SearchesMore
An Introduction to Patent Searches
A patent search is conducted by an examiner when reviewing an application to confirm that it does not, in fact, conflict with prior art. This is required, of course, as the entire point of filing a patent is to protect your invention from potential infringements by future inventors and businesses. What is optional, however, is the ability of the inventor to conduct a separate patent search prior to filing the application. The USPTO, as well as other international offices, has a public database that allows users to personally examine prior art and decide if their invention is patentable.
“Is it worth it?”
There is the question of, “Is it worth it?” The answer is almost always yes. Not only does it give an inventor the opportunity to determine the viability of applying for a patent on an invention, but provides insight into whatever prior art may be related to the invention. This second point is important, as it allows the inventor become more familiar with “what is already out there,” which in turn provides insight into what is unique about the invention under consideration.
At the very least, it his highly advisable to conduct a search before filing a non-provisional patent. Because of the high cost of a non-provisional application, it would be extremely unfortunate if a patent search would have revealed a conflict of claims between the invention in the application and prior art. Conducting a patent search prior to filing can avoid a loss of critical time and money by revealing such conflicts to the inventor.
Hire a Patent Law Professional?
If the budget allows, it is ideal to hire a patent law professional to conduct a search for the inventor. A patent attorney will have a much better understanding of what to look for in prior art, and will be able to determine which patents are more likely to conflict with the invention under consideration. Additionally, a patent attorney will provide a “patentability opinion,” which is their estimate of how likely is that an application will be approved by the USPTO. However, it is important to understand that patent searches are “part art, part science.” Patent attorneys are very skilled at conducting patent searches, but it is impossible for them to be 100% accurate.
One cause for inaccuracy is that inventors have the option to not publicly file a patent application. If a patent attorney is conducting a search for a client, the privately filed application (which could potentially conflict with the attorney’s invention) will not be available. The examiner, however, will have access to the private application, and may reject the attorney’s filed application on the basis of prior art. This is not very common, however, and the benefits of hiring a patent law professional to conduct a search far outweighs such unlikely situations as this example.
As a general guideline, conducting a patent search prior to filing an application is recommended if the budget allows it. If the search shows that prior art conflicts with an inventor’s idea, the inventor has the ability to change the scope/focus of the invention before submitting the application (or abandoning it entirely to pursue another idea, saving time and money in the process). Even if there are no discernible conflicts of claims after conducting a search, a thorough knowledge of prior art allows for an inventor or attorney to prepare a much better application that not only has a higher chance of approval, but is much better defined in the claims it sets out to protect.
12/1/2017 8:01:27 PM
An Introduction to Patent Cooperation Treaty ApplicationsMore
The Patent Cooperation Treaty (PCT) is a treaty that allows for the facilitation of filing a patent application in multiple countries that cooperate with the PCT. Instead of requiring an applicant to file a patent application for each country, the PCT allows the applicant to start the international application process, file a single application, and apply it to all relevant countries.
What is it?
The Patent Cooperation Treaty (PCT) is a treaty that allows for the facilitation of filing a patent application in multiple countries that cooperate with the PCT. Instead of requiring an applicant to file a patent application for each country, the PCT allows the applicant to start the international application process, file a single application, and apply it to all relevant countries. Several benefits afforded to applicants by the PCT include a formalities check, an international search and an optional supplementary international search, an optional international preliminary examination, and an automatic deferral of national processing. These options provide an application with more time and a better idea of whether or not it’s advisable to file an application, and in which countries.
It is important to note that there is no such thing as an international patent, only international patent applications. The PCT procedure does not allow an applicant to receive a “global patent” of sorts that applies to all relevant national Offices. The PCT procedure merely simplifies the process of applying for a patent in multiple countries through the use of an international application process. As detailed below, the international application is sent to each national Office, where it will be either approved or rejected on a country-by-country basis. Use of the PCT, however, still carries a number of advantages, and should certainly be considered if an applicant plans on working towards receiving recognition for a patent in multiple countries.
What can it be applied to?
The international application process can only be applied to the protection of content tha falls under the category of “inventions”. This pertains to inventions, inventors’ certificates, utility certificates, utility models, and several other kinds of patents and certificates. Essentially, if an applicant wishes to file for something that falls outside the scope of “inventions,” such as for a design patent, the applicant cannot do so under the PCT.
How does it work?
The PCT procedure has two different phases, informally referred to as the International Phase and National Phase. The international application process begins in the International Phase, and then (if the results of the international application are favorable) through the National Phase of the relevant countries. The International Phase consists of five parts, three of which are required. The three required steps involve: 1) filing the international application and having it processed by the “receiving Office” (usually the PCT office of the inventor’s native country); 2) the preparation of an international search report and written opinion by an “International Search Authority”; and 3) the publication of the international application with the international search report. This publication is then sent by the International Bureau to the national Offices where the applicant wishes to have a patent granted.
The optional fourth and fifth steps are additional procedures that happen concurrently with step three. Should they be utilized, the resulting reports are sent along with everything else by the International Bureau to the relevant national Offices. The fourth step includes conducting a supplementary international search, carried out by one of several International Search Authorities that were not involved in the primary international search. These supplementary searches result in supplementary search reports, which may also be sent to the relevant national Offices during the third step. The fifth step involves an “International Preliminary Examination” which results in an international preliminary report on patentability. The report analyzes aspects of the invention and determines the general patentability of the invention. If conducted, this report is also sent to the relevant national Offices during the third step.
In order to proceed to the National Phase, the applicant must also take several additional actions in each of the relevant national Offices. These include paying required national fees, providing the Offices with applicable translations of the application, and appointing a patent agent where required. If these steps are not completed within the specified time restraints in a particular national Office, the application is no longer relevant in that Office.
Upon completing the required steps for each relevant national Office, those Offices then examine the application and either grant or refuse the national patent to the applicant. This is where the application is in the National Phase. An application can proceed into the National Phase in some countries while remaining in the International Phase in others, usually if the applicant began the filing process for an application in a specific country before utilizing the PCT. Be aware that subsequent changes to the application in the International Phase will not retroactively affect applications that are already in the National Phase. Applying those changes to applications in the National Phase require the applicant to directly change the national application(s).
Why is it beneficial?
There are several benefits to using the PCT procedure. The largest benefit, however, is the simplification of the international patent application process for the applicant. The PCT allows the applicant to file the international application in one place, in one language, and pay one set of fees. This application is then recognized in all relevant national Offices, and so the applicant does not have to file a separate application for each Office (as would be the case without the PCT).
Most countries that use the PCT have a national Patent Office where the applicant can file the international patent application. This allows an applicant to remain in his or her native country throughout the process and localizes the applicant’s efforts in one place. This localization benefit also allows the applicant to file the application under one language accepted by the Office (which usually ends up being the native language of the applicant) and have the fees paid using one currency, thus avoiding currency exchange difficulties that would otherwise result. The required forms are also standardized under the PCT, allowing applicants to fill out a single set of forms and not worry about dealing with different forms used by different national Offices.
Chances of patentability
Additionally, search and opinion reports produced by the International Phase of the international application process assist the applicant in making decisions regarding whether it is worth prosecuting the application and where. Again, this saves a considerable amount of time and effort on behalf of the applicant, as a centralized report avoids the need to have searches and opinions conducted in each relevant national Office. The option to have supplementary searches conducted by International Search Authorities other than the one who carried out the main search increases the value of the PCT even further. Supplementary searches may provide the applicant with a much clearer picture of relevant prior art and allow the applicant to better determine the chances of successfully patenting the invention under consideration.
The extra time afforded to the applicant by using the PCT is also a very valuable benefit. Most national Offices under the PCT allow for 30 months from the priority date before the application must enter the National Phase. This considerably long grace period in the International Phase gives the applicant time to examine and consider the results of searches and opinions provided by the International Search Authorities, as well as assess the international technical and economic climate. It is then that the applicant can decide which countries are worth the time and cost commitment of applying for a national patent, and save on translation, agent, and filing costs in those that are not.
Another benefit is that a favorable international search report will carry considerable weight when the applicant enters the National Phase and attempts to acquire a national patent for an invention. The benefit of a favorable international preliminary report on patentability (if the applicant chose to have one conducted) is even greater. If the report is only partly favorable, the applicant has the opportunity to modify the claims in the application to focus on the aspects that were favorable. If the report is entirely unfavorable, the applicant can choose not to proceed any further, saving a considerable amount of time and money.
What is included in an international application?
The elements of an international application are, in order: a PCT request, description, claim(s), abstract, and drawing(s). Drawings are usually necessary to the understanding of an invention, but certain inventions may not need them.
The request is essentially a petition for the international application to be processed under the PCT. It is similar to the Application Data Sheet that is filed with non-provisional utility patents to the USPTO, but also includes additional items such as the applicant’s choice of International Searching Authority.
The description for an international application is almost identical to the description for any utility application filed with the USPTO. As described by WIPO, “the description must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.” There is an accepted order to the (six) sections of the description, which should contain the following headings: “Technical Field,” “Background Art,” “Disclosure of Invention,” “Brief Description of Drawings,” “Best Mode for Carrying Out the Invention,” and “Industrial Applicability.”
The claims for an international application, like the description, are the same as the claims for non-provisional utility applications filed with the USPTO. As described by the WIPO, “the claim or claims must ‘define the matter for which protection is sought.’”
Drawings are included in an international application when they are required. As described by the WIPO, drawings must be included “when they are necessary for the understanding of the invention.” It is also important to note that any designated Office may require the applicant to file drawings during the National Phase, even if they weren’t required during the International Phase.
12/26/2017 6:04:25 PM
CIONCA Sets Foot in San FranciscoMore
CIONCA now in San Francisco!
We are proud to announce that CIONCA Law Group has set foot in San Francisco! San Francisco—a global city and technological hub—is home to a variety of innovations, and we are very excited to be part of this community. Located in Mid-Market and easily accessible by the BART line, we are in the midst of growing businesses, including startups and other firms, not to mention Twitter’s headquarters located across the street. As we always have at our primary location, we will offer our services for all of San Francisco’s intellectual property needs, which of course includes patent, trademark, and copyright work. We thank you for your support thus far, and we look forward to the expansion of our firm!
1/2/2018 7:47:09 PM
The Lanham Act: Disparagement Provision Violates the First AmendmentMore
The Lanham Act: Disparagement Provision Violates the First Amendment
On June 19, 2017, the Supreme Court made a decision in Matal v. Tam (previously known as Lee v. Tam). The case addressed the issue of whether or not the Lanham Act’s disparagement clause impeded on trademark applicants’ First Amendment rights.
The case’s history can be traced back to front-man Simon Tam’s application to register his band name The Slants, filed in 2011. As his application progressed through the registration process, it was rejected by the examining attorney, who cited the Lanham Act’s prohibition of trademarks that “may ‘disparage...or bring...into contemp[t] or disrepute’ any ‘persons, living or dead’” U.S.C. §1052(a). However, Tam claimed that his intentions were not to disparage, but to reclaim the term and express pride in his Asian heritage. In response to the denial of his application, Tam appealed before the Federal Circuit, whose final decision recognized the disparagement provision of the Lanham Act as unconstitutional. For this reason, the Federal Circuit expressed that Tam should be granted his trademark registration for The Slants. However, the Patents and Trademark Office still did not agree that Tam should be granted his mark, and the case was then appealed and presented before the Supreme Court.
On January 18, 2017, oral arguments were heard before the Supreme Court, and a decision was made on June 19, 2017. The Supreme Court unanimously affirmed the Federal Circuit’s decision that the Lanham Act’s disparagement provision is unconstitutional, violating the applicant’s right to free speech. This decision was made upon the arguments of viewpoint-based discrimination and commercial vs. expressive purpose of a mark. Although perceived as offensive to some, prohibiting such marks silences a viewpoint, and with trademarks being considered private speech rather than government speech, the silencing of these viewpoints is considered a violation of the First Amendment. Furthermore, because the Government and its programs are obliged to adhere to viewpoint neutrality, commercial speech (i.e. trademarks) is no exception, regardless of the speech’s expressive aspect. The disparagement provision automatically muffles a viewpoint albeit disfavored, and therefore, all trademarks—even those perceived to be offensive—are at the very least entitled to a chance of becoming registered.
This Supreme Court decision redefined the Lanham Act and its boundaries. The disparagement provision can no longer be used as a basis for rejection of a U.S. trademark application due to its violation of the First Amendment. It excludes the government from deciding what is considered moral and immoral, leveling the field for trademark applications and granting applicants the chance to protect their names.
Full decision can be read here: Matal, Interim Director, United States Patent and Trademark Office v. Tam
CIONCA Team1/17/2018 8:12:06 PM
A Fork in the Road: Production or Protection?More
A Fork in the Road: Production or Protection?
Start-ups, small businesses, and individual inventors—typically faced with budgetary concerns—often encounter the dilemma of where to allocate their limited funds. Frequently, entrepreneurs, especially when launching a startup business, need to decide whether to invest in their intellectual property (IP) rights, such as patents and trademarks, or rather in the development of their product or service. This predicament introduces risks that should be carefully considered. The investment in IP may delay the development and the launch of the product and the company itself, but the IP investment is in most cases a must. On the other hand, it is understandable that it is tempting for a startup company to invest in its own launch and growth to quicken its establishment and market presence rather than spend on IP. Serious risks are associated with each option, thus, the decision where to allocate that limited budget have to be carefully considered.
For instance, on an episode of Shark Tank show, we see the outcome of an inventor and entrepreneur decision. She invented a new product (a washable/reusable diaper) that turned out to be a market success. She presented a creative, engaging, and effective pitch to the Sharks. Very interested, the Sharks began to question her business strategies and the status of her success. Unfortunately, in the end the Sharks had to restrain themselves from investing when she revealed her weak IP protection. Although she did decide to invest in both IP protection and production, her IP protection hadn’t been well-balanced, apparently due to the same classical cause, the limited budget at startup. While she did have a patent, it apparently did not provide sufficient patent protection against her competition, likely due to narrow scope of the patent claims. As a result, her weak patent protection was no match for her competition, and her many competitors claimed significant profit that could have been hers had she been able to deter them in the first place. After years of being on the market with her innovative product, the market grew to about 70 million dollars in sales, but she had only a market share of about 3.5 million, due to the fierce competition with many sellers (including a former distributor) who apparently stole her idea and entered the market. Not only that she had a very small share of the market (5%), but the profit margins were low too, due to the difficult competitive climate.
This is a lesson to be learned by all entrepreneurs: A single facet of protection or a single IP tool may not suffice. When an IP attorney suggests for example a continuation application for patent to pursue a second patent with broader patent claims, that have to be carefully evaluated. A family of two or more patents is more likely to better protect the new product or technology. Similarly, securing other IP assets such as by filing trademark application(s), or employing other protective strategies (e.g., trade secrets), must be considered. The goal is to increase the business’ scope of IP protection, dissuading the competition from impeding on its success. Having multiple standpoints of IP protection could provide a more holistic armor for the business.
Of course, the converse situation rings just as true—budget cannot always support both business execution and proper IP protection, and sometimes the product will fail, so the funds spent on IP will be a loss too. However, decisions like these must be made very carefully. The entrepreneur should at all times be mindful of the advantages and disadvantages of investing in IP, and the risks involved on each side.
CIONCA Team2/16/2018 4:07:48 PM
Fashion and Intellectual PropertyMore
Fashion and IP Law at the OCIPLA February 2018 Luncheon
Part of the CIONCA Law team attended the OCIPLA’s February Luncheon, featuring guest speakers Attorneys Farah Bhatti and Victoria Burke. OCIPLA (Orange County Intellectual Property Law Association) is a prestigious IP law organization, with almost 400 IP law professionals as members. Our firm supports OCIPLA through sponsorship and Attorney Cionca’s involvement as a board member.
This month’s topic addressed IP Protections for Fashion and Apparel. The intersection of intellectual property and fashion is emergent, and with fashion’s frequently changing nature and increasing number of players, questions arise regarding how one can protect his or her intellectual property in the industry. As a panel, Attorneys Bhatti and Burke shared their thoughts and opinions on how to maximize IP protection in such a competitive market.
It was discussed that there are a few prominent areas within the realm of IP law, one of which is copyright protection. As defined by the US Copyright Office, “Copyright is a form of protection grounded in the U.S. Constitution and granted by law for original works of authorship fixed in a tangible medium of expression...[and] covers both published and unpublished works.” Regarding to copyright, it is possible to copyright some features of clothing (e.g., fabric prints), but not necessarily the clothing designs themselves. One important question to be answered is: Is the design feature separable—physically or conceptually—from the clothing article?
A second ground covered by the speakers was the possibility of filing for patents in the fashion world. While design patents may be perceived as the only choice, utility patents are still possible to attain for your fashion if the product functions beyond simply being apparel. For example, an article of clothing that also warms the wearer with an incorporated heating element may be eligible for a utility patent.
One last area of IP law as it relates to fashion addressed by the speakers was trademarks and trade dresses. This appears to be the most turbulent branch of IP law in terms of the fashion industry since source identifiers (i.e., trademarks) play a significant role in market success. While a common first thought/instinct is to protect brand name, it is important to keep in mind that the value of non-traditional trademarks should not be underestimated. The distinctness of a stitching, for example, may be enough to strongly identify a source and make an impression on consumers. Furthermore, an ornamental feature, such as unique stitching of a product, may overtime develop into trade dress registrable as a trademark, although secondary meaning is required.
Regarding the enforcement of IP law rights, under copyright or trademark law for example, an accused design/product or trademark or brand do not have to be identical copies to be infringing, as long as there is a suggestion that there may be a relationship between the accused and the original/known brand.
While social media can be used as a tool for the start-up and freelance artist, it should be utilized with caution. As a product’s promotion gains more traction, it runs the risk of becoming a larger target for more social media aficionados and/or more prominent competitors to covet.
3/8/2018 1:25:46 PM
Proceed with Caution: Consider Carefully when Narrowing Claims for AllowanceMore
On March 7, 2018, the Court of Appeals for the Federal Circuit (“Federal Circuit”) has decided Ottah v. Fiat Chrysler. Chikezie Ottah owns U.S. Patent No. 7,152,840 (“’840 Patent”), entitled “Book Holder,” which describes “a removable book holder assembly for use by a person in a protective or mobile structure such as a car seat, wheelchair, walker, or stroller.” While it is expressed in the claims that the apparatus is intended for use with books, the specification notes that the apparatus can be utilized to hold other objects, such as “audio/video equipment, PDAs, or mobile phones, cameras, computers, musical instruments, toys, puzzles and games.” Ottah stated to have invented a mobile camera and averred that several automobile companies infringed on the ‘840 Patent in the manufacturing and selling of their camera holders. In regards to U.S. Patent No. 7,152,840, the New York District Court granted summary judgment of non-infringement to the accused automobile companies after it was established that the patent explicitly protects a book holder, and furthermore, the accused camera holders could not be removed without tools as the book holder apparatus patent requires. Plaintiff Chikezie Ottah appealed the district court’s decision, and the case was brought before the Federal Circuit.
Ottah argued that “fixed mounts” were excluded from the claim’s scope as constructed by the district court. However, the Federal Circuit found it very clear that the ‘840 Patent explicitly addresses a “removeable mounting.” Upon appeal of the district court’s claim construction, the Federal Court held that “mounts that cannot be removed without tools do not literally infringe claim 1, and that claim 1 ‘is clear on its face.’” Therefore, the accused camera holders are beyond the scope of claim 1, which emphasizes the removability of the apparatus. During its prosecution history, the ‘840 Patent forfeited “fixed mounts” and focused on removability to work towards allowability, and “subject matter surrendered to acquire the patent cannot be recaptured by the doctrine of equivalents.”
Moreover, the District Court found that while Ottah declares infringement on the apparatus given its potential use as a camera holder, there is no indication of the ‘840 Patent referring to a camera holder other than the mentioning in its specification (“that the book holder can hold items other than books”). The claim’s limitation to book holders was applied to overcome prior art during prosecution history, and thus, there is no equivalency of books and cameras, as indicated in the specification.
For the above reasons, the Federal Circuit affirmed the district court’s decision.
Claim 1 of the ‘840 Patent requires removability without the use of tools and is limited to a book holder. While the specification states that the device can be used for objects other than books, this alone is not enough to justify the equivalency of cameras and books, and thus extend the scope of the patent claims beyond literal meaning. Additionally, subject matter lost during patent prosecution cannot be addressed by the doctrine of equivalents. The Federal Circuit therefore affirms the district court’s decision in granting summary judgment of non-infringement to the automobile companies. As expressed through this decision, it is important to understand the true scope of your claims during patent prosecution in order to properly assert your patent protection later on. While narrowing claims might be necessary during prosecution, one must always carefully consider what protection is lost and how the loss may affect the patent’s strength.
Full Ottah v. Fiat Chrysler can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-1842.Opinion.3-6-2018.1.PDF
3/20/2018 12:50:05 PM
Andrei Iancu - New Director of the USPTOMore
As of February 8, 2018, Andrei Iancu serves as the Under Secretary of Commerce for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO). Iancu was born in Bucharest, Romania, traveling to the United States with his family at the age of twelve. Iancu’s rich technical background, supplemented by his work as an engineer at Hughes Aircraft Company, includes experience in a wide scope of fields. He is a repeated UCLA graduate, holding a B.S. in aerospace engineering, an M.S. in mechanical engineering, and a J.D. from the UCLA School of Law, where he had returned as a professor of patent law. Before assuming directorship of the USPTO, Iancu was the managing partner of Irell & Manella LLP, where he bolstered his experience in all areas of intellectual property, including representation in high-profile cases. We look forward to seeing what Iancu has in store for the USPTO.
CIONCA Staff4/13/2018 9:10:04 PM
It Take Two to Tango: Knowles v. Iancu, a Standing Dispute in a PTAB DecisionMore
It Take Two to Tango: Knowles v. Iancu, a Standing Dispute in a PTAB Decision Review
On April 6, 2018, the Court of Appeals for the Federal Circuit (“Federal Circuit”) has decided
With respect to Knowles first argument, Knowles asserted that the Federal Circuit “should direct the [PTAB] to adopt the definition of ‘package’” used in a prior case. The Federal Circuit, while it held that in some circumstances the previous interpretations of a disputed claim term (such as “packages”) may be relevant to the PTAB’s later construction of that same disputed term, agreed with the PTAB’s construction of “package” in the ‘049 patent. The Federal Circuit then determined that the extrinsic evidence raised by Knowles cannot overcome the patent intrinsic evidence.
With respect to the second argument made by Knowles, the Federal Circuit held that the PTAB did not rely upon a new ground of rejection to sustain the examiner’s obviousness findings. The PTAB’s rejection cited the same reasons provided by the examiner and Knowles had a fair opportunity to respond to the PTAB’s rejection.
The Federal Circuit considered Knowles’s remaining arguments, and upon finding them unpersuasive, affirmed the USPTO’s Final Written Decision. In the dissent, Judge Newman, questioned whether the USPTO could satisfy the constitutional requirements for Article III Standing.
CIONCA Staff4/20/2018 5:25:25 PM
USPTO Changes Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.More
USPTO Changes Patent Examination Procedure Pertaining to Subject Matter Eligibility in View of Berkheimer v. HP, Inc.
On 19 April 2018 Robert W. Bahr, Deputy Commissioner for Patent Examination Policy, released a memorandum providing “additional USPTO guidance that will further clarify how the USPTO is determining subject matter eligibility [pertaining to] the limited question of whether an additional element (or combination of additional elements) represents well-understood, routine, conventional activity.” The US Court of Appeals for the Federal Circuit (“Federal Circuit”) recently issued a precedential decision over Berkheimer v. HP, Inc. holding that the question above “raised a disputed factual issue.”
Federal Circuit Decision in Berkheimer
The Berkheimer patent specification claims to improve system operation efficiency and reduce storage costs in a digital asset management system by eliminating redundant storage of common text and graphical elements. “The Federal Circuit considered the elements of each claim both individually and as an ordered combination, recognizing that ‘whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact…’ The Federal Circuit held claims 1-3 and 9 of disputed patent ineligible because they do not include limitations that realize these purported improvements… The Federal Circuit held that claims 4-7 do contain limitations directed to purported improvements described in the patent specification…, raising a genuine issue of material fact as to whether the purported improvements were more than well-understood, routine conventional activity previously known in the industry [and] therefore reversed the district court’s decision on summary judgment that claims 4-7 are patent ineligible…” The Federal Circuit determined that an additional element(s) cannot necessarily be considered well-understood, routine, or conventional activity simply because it is disclosed in a piece of prior art.
The Berkheimer decision provides clarification as to the question of whether an additional element(s) represents well-understood, routine, conventional activity. The memorandum clarifies that an examiner’s conclusion that an additional element(s) represents well-understood, routine, conventional activity “only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relative industry [and] such a conclusion must be based upon a factual determination.”
Impact on New Examination Guideline
The memorandum revises the procedures for an examiner to formulate a rejection for lack of subject matter eligibility and evaluating an applicant’s response to said rejection. An examiner must now expressly find one or more of the following to reject an additional element(s) for being well-understood, routine, or conventional:
“A citation to an express statement…made by an applicant…that demonstrates the well-understood, routine, conventional nature of the additional element(s)…as a commercially available product, or in a manner that indicates that the additional element(s) is sufficiently well-known that the specification does not need to describe the particulars of such an additional element(s) to satisfy US U.S.C. § 112(a) [and] cannot be based only on the fact that the specification is silent with respect to describing such element(s).”
“A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) …”
“A citation to a publication that…describes the state of the art and discusses what is well-know and in common use in the relevant industry…
“A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s), This option should be used only when the examiner is certain, based upon his or her personal knowledge…”
With regard to evaluating an applicant’s response, the memorandum states “if an applicant challenges the examiner’s position…, the examiner should reevaluate whether it is readily apparent that the additional elements are in actuality well-understood, routine, conventional activities…If the examiner has taken official notice per paragraph (4)…and the applicant challenges the examiner’s position…, the examiner must then provide one of the items discussed in paragraphs (1) through (3)…or an affidavit or declaration under 37 CFR 1.104(d)(2) setting forth specific factual statements and explanation to support his or her position.”
5/4/2018 7:37:51 PM
The Hague System for Protection of International DesignsMore
The Hague System for Protection of International Designs
Among the intellectual property services provided by the World Intellectual Property Organization (WIPO) is the international registration of designs. Over 68 members, known as Contracting Parties, constitute the Hague Agreement Concerning the International Registration of Industrial Designs, commonly referred to as the Hague System, through which a single international design patent application can be used for registering up to 100 designs. Generally, two Acts, the 1999 Act and the 1960 Act, constitute this agreement.
An “industrial design” is defined legally as the ornamental or aesthetic aspect of an article. This can be made up of three-dimensional features, such as the shape of the article, or can also include two-dimensional features such as patterns, lines, or color. Like a utility patent, an owner of a registered design patent has the right to prevent others from making, using, or selling an article that embodies their protected design. In order to begin the process of protecting a design, a person or entity may apply to several of the Hague Contracting Parties through a single international design patent application filed with WIPO. To be able to file an international design patent application under the Hague Agreement, a natural persons or legal entities must have a real and effective industrial or commercial establishment, or a domicile, in at least one of the Contracting Parties to the Hague Agreement, or must be a national of one of the Contracting Parties (or of a member State of an intergovernmental organization that is a Contracting Party). Under the 1999 Act, an international design patent application can also be filed on the basis of habitual residence in one of the Contracting Parties. The Contracting Party through which one of these requirements is fulfilled is then referred to as the “applicant’s Contracting Party” (under the 1999 Act).
Filing an International Design Application with the Hague System
Prior national application for or registration of a design patent is not required, and application to protect an industrial design can be done through the Hague Agreement to apply for protection at the international level before any other step. To claim priority to an earlier filed application for a design patent, the international application must be filed within six months of that earlier filed application.
A single international application can be a “multiple application” which has several different designs (up to 100). However, this may differ according to which Contracting Party is designated. Also, all designs included in the same application must be monoclass, meaning that they must all belong to the same class of the international classification of Locarno.
The application for patent can be electronically filed directly through the International Bureau or indirectly through, for example, the USPTO, and must contain a reproduction of the design to be protected, and the designation of the Contracting Parties in which the protection is sought. The application must be in English, French, or Spanish.
When the International Bureau receives the application, it will review it to ensure that the appropriate fees have been paid and that all formal requirements have been met. If so, the application will be given a filing date, and the industrial design will be registered and published in the International Register. If the requirements are not fulfilled properly, the applicant will be invited to correct the issues within a time limit.
The applicant may request a deferment of publication, but the period cannot exceed 30 months from the date of filing or from the priority date, if priority is claimed.
Examination of the International Application
Next, the offices of the designated Contracting Parties in the design patent application will then proceed with examination if such examination is required under their laws. If the examination results in a refusal of protection of the design, the office may notify the International Bureau. This notification should occur within six months from the date of the international registration publication (or up to 12 months depending on the particular office’s regulations).
Following this, using the USPTO as an example, the applicant may receive a non-final rejection, a final rejection, or an allowance.
A list of the Contracting Parties can be found at http://www.wipo.int/hague/en/members/
Further information about the Hague Agreement Principles from the MPEP can be found at https://www.uspto.gov/web/offices/pac/mpep/s2901.html and further information about fees from the MPEP can be found at https://www.uspto.gov/web/offices/pac/mpep/s2910.html
The fee calculator can be found at: http://www.wipo.int/hague/en/fees/calculator.jsp
A comprehensive guide to the Hague System can be found at http://www.wipo.int/hague/en/guide/ and http://www.wipo.int/treaties/en/text.jsp?file_id=285214
The Locarno Classification can be found at http://www.wipo.int/classifications/locarno/en/
CIONCA IP5/17/2018 9:54:58 PM
Marin Cionca Presents at OCIPLA May 2018 LuncheonMore
7/3/2018 7:44:33 PM
Impax Laboratories Inc. v Lannett Holdings Inc. on Claim InvalidationMore
On June 28, 2018 the Court of Appeals for the Federal Circuit (“Federal Circuit”) has decided Impax Laboratories Inc. v. Lannett Holdings Inc. Licensed to Impax Laboratories Inc. (“Impax”) by AstraZeneca UK Limited (“AstraZeneca”), Zomig® Nasal Spray, made from AstraZaneca’s patented zolmitriptan formulation, was developed and sold for migraine treatment. In June 2014, Lannett Holdings Inc. (“Lannett”) notified AstraZeneca of its pursuit of developing a generic version of Zomig® Nasal Spray, alleging noninfringement and invalidity of AstraZeneca’s patents as obvious over prior art disclosing a formulation that could be administered intranasally, further suggesting that zolmitriptan could be an active ingredient in the formulation. In defense Impax sued Lannett in the District of Delaware for infringement, and the court ruled in favor of Impax, asserting that the prior art taught away from intranasal application as zolmitriptan alone is not an active ingredient for such application, which is required of intranasal administration. Lannett appealed the court’s decision, and the case was brought to the Federal Circuit.
Decision & Conclusion
While the Federal Circuit found the case “close,” the district court’s findings were affirmed. One skilled in the art would be dissuaded from an intranasal application of zolmitriptan as it is “absolutely counterintuitive to make a nasal spray when you have an active metabolite which is more potent...than the drug itself” (13). As such, the prior art failed to teach the administration of zolmitriptan through the nasal passage. Furthermore, “The court found Appellees’ experts more credible than Lannett’s and ultimately was not convinced that Lannett had shown that the patents were invalid” (16). Thus, patent claim invalidation cannot be supported by prior art’s mere mentions of a claimed formulation and the administration of this formulation when the ingredient in question is only part of the claimed formulation rather than its active ingredient.
Full Impax Laboratories Inc. v. Lannett Holdings Inc. can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-2020.Opinion.6-28-2018.pdf
Marin Cionca7/31/2018 6:50:05 PM
My patent expired? Can I still sue for patent infringement?More
My patent expired? Can I still sue for patent infringement?
There are situations when a patent owner contemplates filing a patent infringement lawsuit after the patent expires. Is it too late to sue? Maybe not. The particular facts will have to be weighed against the legal doctrines of laches and equitable estoppel and against the statute of limitations applicable to patent infringement claims.
As known, in the United States, design patents expire 15 years after grant and utility patents expire 20 years after the effective filing data (i.e., the earliest of the actual filing date of the patent application and the earliest priority date claimed).
Let’s say that a patent expired 4 years ago. Is it too late to sue now? And if not, would it be worth it? Well, since the patent is now expired, an injunction and forward damages (i.e., for infringement occurring after the filing date of the infringement lawsuit) are not available. What about backward/pre-suit damages? Before March 21, 2017, the defense of laches asserted by the patent infringer may have derailed the effort to collect pre-suit damages, if the defendant could show that the patent owner unreasonably delayed enforcing its patent rights while the defendant continued to invest in the accused product, and, allowing patent enforcement now would prejudice the defendant.
That is not true anymore. That is according to the Supreme Court’s decision in SCA v. First Quality (SCA HYGIENE PRODUCTS AKTIEBOLAG ET AL. v. FIRST QUALITY BABY PRODUCTS, LLC, ET AL.) issued on March 21, 2017. A link to the entire court opinion is provided at the end of this blog.
In SCA, the Court held that “[l]aches cannot be interposed as a defense against damages where the infringement occurred within the period prescribed by §286.” The period prescribed by §286 is 6 years (35 U.S. Code § 286: “Except as otherwise provided by law, no recovery shall be had for any infringement committed more than six years prior to the filing of the complaint or counterclaim for infringement in the action”).
Thus, in our scenario, the patent owner could still sue and could potentially recover 2 (6-4) years of damages, assuming that the doctrine of equitable estoppel would not apply. As known, the doctrine of equitable estoppel could bar recovery of any damages when the patent owner by its actions misled the accused infringer into believing that the patent will not be asserted against the defendant.
Thus, assuming that the equitable estoppel defense is not a concern, the patent owner could still sue, but if it is worth it or not, may depend on what were the sales of the infringer the 5th and the 6th years prior to filing the patent infringement lawsuit. If they were relatively small, let’s say about $200,000 a year, at a reasonable royalty rate of let’s say 7%, the maximum recovery would be $28,000 (assuming no willful infringement can be proven), and thus it may not be worth it, considering the high cost of patent infringement litigation.
While the defense of laches can no longer prevent recovery of damages for past infringement if the infringement occurred during the last 6 years, patent owners should assert their patents before the patents expire, to avoid losing years of past damages (i.e., 4 years in the above example). Further, in general, and especially if interacting with the accused infringer, care should be exercised, not to say or do something to mislead the infringer into believing that the patent would not be asserted.
SCA v. First Quality Opinion available at https://www.supremecourt.gov/opinions/16pdf/15-927_6j37.pdf
Diclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
Staff8/16/2018 4:24:01 PM
Correcting or Changing a Patent After Issue Through the Central Reexamination UnitMore
There are five primary ways in which a patent can be corrected or affected after it has been issued, wherein the proceedings are handled by the Central Reexamination Unit (CRU), although the first two that will be discussed do not actually involve a reexamination of the patent in question (despite the name Central Reexamination Unit). These five ways of correcting or affecting a patent are: statutory disclaimers, certificates of correction, reissue, ex parte reexamination, and supplemental examination. Other ways of affecting a patent after issue include trial proceedings that are conducted by the Patent Trial and Appeal Board, and include inter partes review, post grant review, and covered business method review. If a patent owner is aware of any issue or error in their patent, they must choose the correct route for addressing those issues or errors.
Before the formation of the CRU, requests for reexamination would be routed back to the art unit that originally worked on that patent. These requests were uncommon when compared to the typical examination work that examiners performed in their day-to-day work, and thus, the examiners were not always familiar with reexamination proceedings. When the CRU was formed in 2005, the centralization of these types of requests allowed experienced examiners dedicated to the reexamination of patents to become specialized in these matters. Another advantage of the CRU is that it helped to eliminate some of the bias that might be present when a reexamination request went back to the art unit that issued a patent, since the older system might have caused a reluctance to admit the art unit had issued an erroneous patent.
The statute, in 37 CFR 1.321, allows a patent owner to disclaim any complete claim or claims, or patent. There are a few reasons why an owner might want to do so, and an example is to reduce issues during court proceedings. A fee is required for a statutory disclaimer.
More information about statutory disclaimers can be found in MPEP chapter 1490.
Certificate of correction
Minor errors in a patent can be fixed by filing a certificate of correction. The CRU reviews the error, and if the error was the fault of the USPTO, there will be no associated fee. Errors made by the applicant must be corrected with a fee.
The types of errors that the certificate of correction is used for is limited and include only minor errors such as typos or spelling mistakes, and as such, the terms of a claim cannot be corrected by using a certificate of correction.
More information about certificates of correction can be found in MPEP chapter 1481.
A reissue is used for making more substantive changes or corrections than a certificate of correction is used for. It is an option that is only available to patent owners, and it requires a fee. For a reissue to take place, the errors that are to be corrected must be errors that would render the patent wholly or partly inoperative, or invalid. If the patent was assigned, it is required to file a consent of the owner for the reissue.
During a reissue, additional dependent or narrower claims can be added. However, there is a limitation to adding broadening claims. A broadening reissue must be filed within two years from the grant of the original patent. If an amended claim is broader in any respect than the original claim – even if it was narrowed in other respects – the claim has been broadened. To understand how “broadening” is defined, an “infringement test” can be used, which is: if someone infringes on the amended claim, but was not previously infringing on the original claim, then the claim has been broadened.
Since the reissue is only for the unexpired portion of a patent’s term, if a patent were to expire during the course of a reissue prosecution, the proceedings are terminated. This is not the same for reexamination, which could affect the entire period of enforceability of a patent.
More information on reissues can be found in MPEP chapters.
Ex Parte Reexamination
Under the reexamination statute 35 U.S.C. 302, “Any person at any time may file a request for reexamination by the Office of any claim of a patent on the basis of any prior art cited.” This means that the patent owner or a third party (who receives copies of all communications from the Office during the reexamination proceeding) can file the request, and the requester can remain anonymous. The reexamination can be requested for one or more claims, and the general practice of the CRU is to examine only those claims that were requested. This reexamination will be on the basis of prior art only, meaning that other issues, such as 35 U.S.C. 112 issues, cannot be addressed.
The process begins with the filed request, which, if it was proper, is given a filing date. A proper request must be in writing, accompanied by a fee, and must be based only on printed publications or patents – it cannot be based on, for example, an affidavit or other such evidence. These can be used, but not as the basis, and can only be used to support the prior art that the reexamination is based upon.
The threshold for initiating the reexamination proceeding after the request is filed is called a “substantial new question of patentability” (SNQ). A determination of whether or not SNQ has been raised must be made by the Office within three months. If the examiner determines that an SNQ is raised, then the examiner will order the reexamination; otherwise, the request is denied. A patent owner can have the opportunity to make a statement (or waive the right to do so), and a third party filer may comment on that statement. Afterwards, the third party will have no role in the reexamination proceeding. Then, the reexamination is conducted much like the examination process of a patent application, with a few exceptions. For one, no Request for Continued Examination is offered – there is only one opportunity to amend as a matter of right. Another difference during the examination process is that the reexamination uses “special dispatch,” which means that extensions of time are not automatic and are only granted with cause, and times for reply can be shortened (particularly the case when the patent is involved in a court proceeding). Another important difference is that amendments cannot be broadening during a reexamination. The proceeding concludes with a certificate of reexamination.
More information on ex parte reexamination can be found in MPEP chapter 2209.
Supplemental examination came about with the America Invents Act (AIA), and can only be filed by the patent owner. A primary difference between supplemental examination and an ex parte reexamination requested by the patent owner is that in an ex parte reexamination, only prior art issues can be raised; in supplemental examination, all issues can be raised, including issues related to subject matter eligibility of 35 U.S.C. 101 or written description requirements of 35 U.S.C. 112. The patent owner can request that the Office “consider, reconsider, or correct information believed to be relevant to the patent,” according to the statute, 35 U.S.C. 257.
There are two phases of supplemental examination. The first is the supplemental examination phase, and a second reexamination phase that could result from the findings of the first phase. The reexamination generally proceeds similarly to the reexamination of the ex parte reexamination discussed above, with a few exceptions. Notably, the reexamination is not limited to prior art issues.
The supplemental examination does not involve any interaction between the requester and the Office, and concludes with a certificate to indicate whether or not the “items of information” provided by the patent owner (which are limited to twelve) raised an SNQ. Like in ex parte reexamination, the Office must make this determination within three months.
A primary advantage of supplemental examination for a patent owner is that it provides the owner with a potential mechanism for immunizing themselves against allegations of inequitable conduct. That is, when information is considered, reconsidered, or corrected during this process, the patent cannot be “held unenforceable on the basis of conduct relating” to this information (35 U.S.C. 257(c)(1)). Thus, it can be advantageous for a patent owner in some situations to request a supplemental examination, particularly over an ex parte reexamination if items of information are available which are not based on printed publications or patents.
More information about supplemental examination can be found in MPEP chapter 2802.
The USPTO website for the CRU can be found at:
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
Staff8/31/2018 7:26:58 PM
Patent Claim Interpretation By Federal Circuit's on Facebook's Contiguous Image LayoutMore
On August 14, 2018, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”), with Prost as Chief Judge, decided on Facebook’s appeal to the Patent Trial and Appeal Board (“PTAB”) regarding a final rejection of application No. 13/715,636 (“’636”). The ‘636 application concerns “a method for arranging images contiguously in an array” via an algorithm, wherein the arrangement and placement of image elements is adjusted “so as to preserve the contiguous layout.” The algorithm of the ‘636 application can further adjust the arrangement and placement of images in response to user actions such as resizing, resequencing, and so on.
A section of claim one of the ‘636 application asserts “determining, in response to an instruction to adjust the position or size of a first image element, a second position in the array for at least one second image element, the second position determined based on a rule requiring the image elements to be contiguous…” A patent examiner rejected some claims as anticipated and the rest as obvious, citing a patent application filed by Perrodin.
Perrodin’s application disclosed an algorithm for positioning image elements on a grid, wherein “the application places the [three by three] first image across three cells in both directions. The application then marks those cells as being used or allocated… [Then] the remaining images are distributed across each available cell in the grid.” Perrodin also disclosed said algorithm can “reflow” image elements on the grid after a user moved an image within the grid.
The examiner concluded that “the foregoing discloses of Perrodin satisfied the ‘rule requiring the image elements to be contiguous’ limitation” of the ‘636 application. PTAB thus adopted the examiner’s conclusion and affirmed the rejections. The appellant, Facebook, appealed PTAB’s affirmation “because [PTAB’s] reading of the relevant prior art reference cannot be supported by substantial evidence.”
The exclusive question considered on appeal by the Federal Circuit is whether or not Perrodin disclosed, within the meaning of the claims, “a rule requiring the image elements to be contiguous such that each available image position between the first image element in the sequence and the last image element in the sequence is occupied by an image element.” While the “reflow” depicted in the example shown by FIGs. 18 and 19 happened to result in a contiguous arrangement, Perrodin’s algorithm does not require a contiguous arrangement. Perrodin’s lack of required contiguity is further made plain by FIG. 17 of the application, which shows another “reflow” example that resulted in unoccupied grid cells. Thus, Perrodin’s application did not require contiguity.
The Federal Circuit determined Perrodin’s algorithm “did not require contiguity in response to resizing and rearranging in all cases, but rather left open the possibility that cells would be left unfilled.” Thus, the Federal Circuit reversed PTAB’s final rejection of the ‘636 application and remanded for further action. The appeal was reversed and remanded.
Full In re: Facebook, Inc. decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-2524.Opinion.8-14-2018.pdf
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
CIONCA Team Member9/17/2018 4:33:20 PM
Trademarks and Likelihood of Confusion: Federal Circuit’s Decision in In re: Detroit Athletic Co.More
On September 10, 2018, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) made a decision in In re: Detroit Athletic Co. Detroit Athletic Co. (“DACo”) is a shop of sports apparel and souvenirs. In May 2015, DACo filed an application for the mark DETROIT ATHLETIC CO. on the Principal Register. However, the examining attorney refused registration on the basis of likelihood of confusion with registered mark DETROIT ATHLETIC CLUB, a Detroit-based social club also in the business of selling clothing, including athletic apparel. DACo appealed the examining attorney’s decision and thereafter, the Board affirmed. DACo appealed again to the Federal Circuit.
Section 2(d) of the Lanham Act states “a mark may be refused registration if it ‘so resembles a mark registered in the Patent and Trademark Office …as to be likely, when used on or in connection with the goods of the applicant, to cause confusion[.]’” Moreover, the PTO determines likelihood of confusion by the following DuPont factors:
1) The similarity of dissimilarity of the marks in their entireties as to appearance, sound, connotations, and commercial impression.
2) The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
3) The similarity or dissimilarity of established, likely-to-continue trade channels.
4) The conditions under which and buyers to whom sales are made—i.e., “impulse” vs. careful, sophisticated purchasing.
5) The fame of the prior mark (sales, advertising, length of use).
6) The number and nature of similar marks in use on similar goods.
7) The nature and extent of any actual confusion.
8) The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
9) The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).
10) The market interface between applicant and owner of a prior mark.
11) The extent to which applicant has a right to exclude others from use of its mark on its goods.
12) The extent of potential confusion—i.e., whether de minimis or substantial.
13) Any other established fact probative of the effect of use.
Per the Board’s decision, factors considered relevant to the matter were Factors 1, 2, 3, and 8.
Regarding Factor 1, DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB are similar in appearance, sound, and impression. Both marks consist of three words, the first of the two—the dominant portion of both marks—being identical. Their terminal words are also similar in that they are both monosyllabic terms beginning with consonant ‘C’. While CO. and CLUB differ, their dissimilarity is not enough to combat confusion as they are both descriptive and refer to the entity of each business. Although the two different terms are disclaimed in DACo’s and the Detroit Athletic Club’s applications, respectively, their disclamation does not affect the public’s impression of their marks.
Regarding Factor 2, although DACo services (“[o]n-line retail and consignment stores featuring sports team related clothing and apparel; [r]etail apparel stores; [r]etail shops featuring sports team related clothing and apparel; [r]etail sports team related clothing and apparel stores.”) and the Detroit Athletic Club claims goods (“[c]lothing, namely athletic uniforms, coats, golf shirts, gym suits, hats, jackets, sweat pants, sweat shirts, polo shirts, and T-shirts.”), the nature of both overlap. This is due to the fact that Detroit Athletic Club’s goods seem to include general clothing, which would then encompass DACo’s goods. Additionally, and more apparently, both sets are relevant to sporting.
Regarding Factor 3, DACo attacks the registered mark’s validity by disclosing that the Detroit Athletic Club only sells its goods to its club members and its private gift shop. While this may diminish confusion, this statement is irrelevant in evaluating factor 3 because evaluation must be directed towards channels specified in the registration rather than real-world conditions. Moreover, although the Detroit Athletic Club’s registration contains no restriction on the channels of trade, the Federal Circuit “may not assume that the club will never sell clothing online or through third-party distributors.”
Finally, to address Factor 8, DACo submitted evidence to show lack of confusion, which included a statement from a long-time consumer and online search results. The Federal Circuit distinguishes that the test aims to evaluate likelihood of confusion, not actual confusion. “Likelihood of confusion in this context can be established even in the face of evidence suggesting that the consuming public was not actually confused” (16). Thus, evidence submitted by DACo positing that at least one consumer is highly aware of their mark and associated service was deemed dispositive. Again, as with Factor 3, Factor 8 is not concerned with actuality, but rather, it is concerned with possibility.
The Federal Circuit concluded that based on evidence above, the marks are likely to be confused and therefore affirmed the Board’s ruling.
Full In re: Detroit Athletic Co. can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-2361.Opinion.9-10-2018.pdf
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
Marin Cionca10/1/2018 7:42:12 PM
Can I Register a Color as a Trademark or Service Mark?More
Can I Register a Color as a Trademark or Service Mark?
The answer is yes, but it is not easy. Color marks are not inherently distinctive, and thus, they cannot be registered on the Principal Register at the USPTO without a showing of acquired distinctiveness (secondary meaning) under §2(f) of the Trademark Act. Trademark Manual of Examining Procedure (TMEP), 1202.05. So, you may need to start at the USPTO on the Supplemental Register and later provide proof of acquired distinctiveness (i.e., the consumers associate the respective color with your goods or services). One way that may be acceptable by the USPTO to show acquired distinctiveness is to use the color as a mark for five years.
Examples of colors that were found registrable/protectable as trademarks are (per TMEP, 1202.05):
- green-gold color combination used on dry cleaning press pads (the color was found to have acquired secondary meaning; Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161 (1995));
-the colors green and yellow, as applied to the body and wheels of machines, respectively, not barred from registration on the basis of functionality; evidence established the colors had become distinctive of the goods; In re Deere & Co., 7 USPQ2d 1401, 1403-04 (TTAB 1988)
-the color pink as applied to fibrous glass residential insulation (the evidence showed the color had acquired secondary meaning); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417 (Fed. Cir. 1985);
As suggested from the examples above, for color marks used in connection with goods, color may be used on the entire surface of the goods, on a portion of the goods, or on all or part of the packaging for the goods. “For example, a color trademark might consist of purple used on a salad bowl, pink used on the handle of a shovel, or a blue background and a pink circle used on all or part of a product package.” TMEP, 1202.05. Similarly, service marks may consist of color used on all or part of materials used in the advertising and rendering of the services, such as brochures, business cards, invoices, websites, etc.
Examples of colors that were found unregistrable/unprotectable (per TMEP, 1202.05):
- "blue motif" used in retail stores, not registrable on Principal Register without resort to showing acquired distinctiveness/secondary meaning, because it would likely be perceived by prospective purchasers as "nothing more than interior decoration”; In re Hudson News Co., 39 USPQ2d 1915, 1923 (TTAB 1996);
- color yellow appearing as the predominant uniform background color on product packaging for cereal (evidence insufficient to demonstrate that mark had acquired distinctiveness); In re Gen. Mills IP Holdings II, LLC;
- green rectangular background design as applied to clothing and footwear (evidence insufficient to establish that it had acquired distinctiveness as applied to clothing and footwear; TTAB found that the green rectangle was nothing more than a background design used to display the Benetton trademark and Benetton admitted that it never used the green rectangle separately); In re Benetton Grp. S.p.A., 48 USPQ2d 1214 (TTAB 1998);
- color pink used on surgical wound dressings was found functional and thus unregistrable because the actual color of the goods closely resembles Caucasian human skin; In re Ferris Corp., 59 USPQ2d 1587 (TTAB 2000);
- colors yellow and orange held to be functional for public telephones and telephone booths, thus unregistrable, since they are more visible under all lighting conditions in the event of an emergency; In re Orange Commc'ns, Inc., 41 USPQ2d 1036 (TTAB 1996);
While color can be registered as a trademark or service mark, it is not easy, and thus, some careful planning may be necessary. Takeaways are to choose a color that cannot be interpreted as functional for the respective good or service and to promote the color as a mark, i.e., same way as you promote your other marks (logo, product name, slogan, etc.).
CIONCA Team Member10/16/2018 6:50:31 PM
A Double-Edged Sword: Benefit of Priority or Longer Patent TermMore
On October 1, 2018, the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) made a decision in Natural Alternatives International, Inc. v. Andrei Iancu. Starting December 2011, Natural Alternatives International, Inc. (“NAI”) was in district court litigation with Woodbolt Distributors, LLC (“Woodbolt”). In May 2012, Woodbolt requested inter partes review of NAI’s Patent No. 8,067,381 (“the ‘381 Patent”), issued from the last of eight patent applications filed by NAI between 1997 and 2011. While the first through sixth applications each initially correctly claimed priority to the preceding applications, NAI amended the “Cross Reference of Related Applications” section of only the fifth application, disclaiming priority to the fourth through first applications, and only claiming priority to a provisional application filed during the pendency of the fourth. However, this amendment was not made in the sixth application or the subsequent seventh and eight applications. With this break in the priority chain as a platform, Woodbolt requested inter partes review of the ‘381 Patent. In defense, NAI averred that this break is irrelevant to the later filed applications as the sixth application claims priority to the fourth through first applications. Unpersuaded, the examiner rejected the reexamined claims in view of prior art, including Patent No. 5,965,596, NAI’s patent issued from their first filed application. Natural Alternatives appealed to the Patent and Trial Appeal Board, who affirmed the examiner’s decision and denied NAI a rehearing. NAI then appealed to the Federal Circuit.
NAI presented its argument to the Federal Circuit in four parts. First, NAI asserts that the ‘381 Patent’s priority to the first application was secured as the complete priority chain was invoked in the sixth application once the application met all criteria. Second, NAI claims that a waiver of priority is only applicable to the instant application and not subsequent filings. Third, NAI presses that “the Board erroneously viewed priority as a single growing chain rather than multiple fixed chains.” Fourth, given their third argument, having such a view “‘limits an applicant’s ability to seek protection’” when “‘amending a priority claim to gain [patent] term’” (6).
In response to NAI’s first point, the Federal Circuit strongly affirms that “amending an earlier filed parent application may affect the priority of its child applications” (9). While the eighth application claimed priority to the first application, it did not meet the requirements entitling its claim to priority benefits as the fifth application lacked priority to the first. Addressing NAI’s second point, the Federal Circuit emphasizes that while the MPEP reads, “‘[a] cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application,” understanding the rule as being applicable only to the instant application is too narrow; there is no language limiting the scope of this rule to only the instant application (10). Towards NAI’s third point, “The Supreme Court has previously explained that under § 120, parent and continuing applications ‘are to be considered as parts of the same transaction, and both as constituting one continuous application, within the meaning of the law’” (12). Finally, in response to NAI’s fourth point, the Federal Circuit maintains that by voluntarily omitting a priority claim to avoid losing patent term, the Applicant must accept the loss of benefits to claiming priority, including the possibility of a parent application being used as prior art. Thus, for the aforementioned reasons, the Federal Circuit affirmed the Board's decision.
In conclusion, Applicants should carefully consider the use of priority claims. As demonstrated in this case, any break in the chain could jeopardize the validity of subsequent patents.
Full Natural Alternatives v. Iancu decision can be read here:
CIONCA Team Member11/19/2018 1:07:51 PM
The Appeals ProcessMore
The Appeals Process
During the patent prosecution process, it is not uncommon for an applicant to receive a Non-Final Rejection for their claims. Once the claims have been twice rejected (oftentimes the second rejection being a Final Rejection), the applicant could appeal from this decision. The patent applicant (in the case of a patent application) or patent owner (in the case of a reexamination) can file an appeal.
If an applicant decides to move forward with the appeals process, the first step is to file a Notice of Appeal with the Patent Trial and Appeal Board (PTAB, or Board), with the accompanying fee. This must be done within the time period set by the last Office Action. Then, an appeal brief must be filed.
The Notice of Appeal is a simple form that can be filed through the USPTO’s Patent Application Information Retrieval (PAIR) system. Like other documents in the patent prosecution history, the status of the application and the receipt date of the Notice of Appeal can also later be viewed through PAIR.
As of this writing, an ongoing pilot program allows the filing of a Pre-Appeal Brief Request for Review at the time of filing the Notice of Appeal. The USPTO provides a form for this request, and a separate paper should be submitted containing a succinct and focused set of arguments, no longer than five pages. If proper, the examiner of record is provided with the opportunity to review the arguments with a panel of reviewers assigned by a supervisor. The appellant does not attend this review. Based upon the findings of the review, the Office will next send a decision to the appellant, which could be that the application remains under appeal because at least one issue for appeal still exists, prosecution on the merits is to be reopened, the application is allowed on the existing claims, or the case is dismissed due to the request failing to comply with submission requirements.
This panel review could also be terminated if, before the mailing of a decision, the applicant files any of the following: an appeal brief, a request for continued examination, an after final amendment, an affidavit or other evidence, or an express abandonment.
If the panel review is completed and a decision is mailed to the applicant, the time period for filing an appeal brief is reset to one month from the mailing of the decision or the balance of two months from the Notice of Appeal, whichever is greater. Further information about the Pre-Appeal Brief Review Request pilot program can be found in MPEP 1204.02.
With no other factors in play such as a Pre-Appeal Brief Request for Review, the applicant must file their appeal brief within two months of filing the Notice of Appeal (otherwise, the appeal is dismissed). The appeal brief should contain an identification of the real party in interest, a list of any related appeals, interferences, and trials, a summary of the claimed subject matter, the arguments of the appellant, and an appendix of claims. Further details regarding the contents of the appeal brief can be found in 37 CFR 41.37.
The examiner will then discuss the case with a supervisor and another examiner to determine whether the case should be sent to the PTAB. The examiner can withdraw their previous rejection or file an Examiner’s Answer, which means that the appellant must pay a forwarding fee to send the case to the PTAB. They can also file an optional Reply Brief as a response to arguments in the Examiner’s Answer. Another option the appellant has at this stage is to request an oral hearing. However, the MPEP states that this should only be requested in circumstances where the hearing is necessary for a proper presentation of the appeal (MPEP 1209).
Three judges are assigned to the case when it is received by the PTAB. During their proceedings over the case, the PTAB could require the appellant to brief any matter considered to be of assistance in reaching a decision. These are accompanied by a time period for reply, and failure by the appellant to reply could terminate the proceedings. Similarly, any of the following could terminate the PTAB’s jurisdiction over the patent appeal: the PTAB entering a remand order or a final decision, an express abandonment, the filing of a request for continued examination, the applicant failing to respond to a request or take a required action, or the applicant reopening prosecution.
It is then up to the PTAB to issue a decision, which could be a new ground of rejection, a reversal, or affirmance of the Examiner’s decision, or the Examiner’s decision is affirmed-in-part. After the PTAB issues their decision, the jurisdiction passes back to the examiner of record. At this stage, the applicant can still file a request for continued examination or a continuing examination claiming priority to the application which was under review. If there is a new ground of rejection, the appellant could also reopen prosecution before the examiner (by submission of an amendment and/or new evidence). Lastly, within two months of the decision issued by the PTAB, the appellant could still optionally request a rehearing before the PTAB.
The USPTO provides a helpful guide to the appeals process, which can be accessed here:
Marin Cionca12/8/2018 8:35:06 PM
IP Assets - Procurement, Enforcement, MonetizationMore
IP Assets - Procurement, Enforcement, Monetization
This week, I had the pleasure to speak at a SCORE – Orange County event about IP (Intellectual Property) issues to an audience primary made of small OC business owners. The topic was IP Assets - Procurement, Enforcement, Monetization and the subtopic was what every entrepreneur should know about trademarks, patents, copyrights and other IP assets.
I talked first about a few foundational points regarding IP procurement. IP, of course, includes, trademarks, copyrights, patents, trade secrets and trade dress. As known, a business can acquire copyright (an IP asset) in the articles, logos, pictures, videos, website design, etc. that are created on their behalf by employees or by service providers.
One important consideration is for businesses to use agreements with strong IP provisions that clearly transfers all IP rights, that may be vested initially in the IP creators (the employees and the outside services providers), to the business. This is particularly important when dealing with service providers. For example, if the business hires a web designer/developer as an independent contractor to create a website, the copyright belongs to the designer unless the service agreement clearly states otherwise. This applies not only to copyrights, but also to trademarks (e.g., a logo created by an outside graphic designer) and patents (e.g., an invention conceived by a consultant) and to all other IP.
As known, copyrights can be registered with the US Copyright Office for additional benefits (e.g., right to sue in Federal Court, statutory damages). Trademarks can be filed with the Secretary of State office to obtain state registrations and, clearly a superior option, with the USPTO (United States Patent and Trademark Office) to obtain a federal registration, to constructively occupy all 50 states and for other benefits.
Patents as well can be filed for with the USPTO to obtain a 15 year design patent protection for new designs of new or existing products or 20 years utility patent protection for products, machinery, processes or compositions that are new in terms of structure or function.
One other thing I touched on included some observations regarding choosing a mark. As known, generic or descriptive terms cannot function as trademarks (e.g., APPLE for apples). Suggestive marks are typically OK, but arbitrary (e.g., APPLE for computers) or fanciful (i.e., made-up words such as Google) are much better.
Also, before adopting a mark, trademark clearing searches are strongly recommended. It can avoid a lot of headaches for the businesses down the line. This is true not only for an easy path to registration, but also for avoiding conflicts with other marks that may cause serious business losses later (legal expenses, costs with changing the mark, etc).
As the time was running out, due to the business owners asking many questions related to issues they were unclear about, the IP Enforcement and IP Monetization portions of the planned discussion were left for another time…
CIONCA Team Member12/18/2018 6:12:48 PM
Schlafly v. The Saint Louis Brewery: The Registration of Merely a SurnameMore
On November 26, 2018, the United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) made a decision in Schlafly v. The Saint Louis Brewery. In 2011, the Saint Louis Brewery (“SLB”), a beer brewery based in Missouri founded in 1989 by Thomas Schlafly, applied for registration of the mark SCHLAFLY, which has been sold in association with their beer since 1991. During the application’s publication for opposition, two opposers were in favor of blocking the mark’s registration: Phyllis Schlafly and Bruce Schlafly, Thomas Schlafly’s aunt and cousin (“the Opposers”), respectively. However, the Trademark Trial and Appeal Board (TTAB) denied their opposition and entitled the SCHLAFLY mark to registration on the Principal Register. Thereafter, the Opposers appeal TTAB’s decision on the basis that TTAB disregarded the fact that the mark is a surname and that the applicant had failed to provide survey evidence of the mark’s secondary meaning. Moreover, “the Opposers claim violation of their First Amendment, Fifth Amendment, and Due Process rights and protections.” The appeal is in the Federal Circuit’s jurisdiction.
The Opposers first challenge the mark’s acquired distinctiveness and assert that secondary meaning was not properly proven. Per the Code of Federal Regulations, the following may be considered to demonstrate secondary meaning: (1) Ownership of prior registration, (2) Five years substantially exclusive and continuous use in commerce, or (3) Other evidence, such as verified statements, depositions, etc. In this case, SLB presented evidence in all acceptable areas, and thus, secondary meaning is justified.
The Opposers further argue that the public associates SCHLAFLY with Phyllis Schlafly as she was an iconic conservative activist and insist on the “change in significance” test, “whereby a surname cannot be registered as a trademark without showing a change in significance to the public, from a surname to an identifying mark for specified goods.” However, the examiner and Board had already found that the mark had accrued secondary meaning and had been correlated with their goods of beer products.
Additionally, the Opposers allege that the Board disregarded SCHLAFLY as merely a surname. Nonetheless, per statute, a surname is eligible for trademark registration granted that it has established secondary meaning in commerce.
Regarding the Opposers’ constitutional allegations, the claim that registration of the mark impedes on their First and Fifth Amendment rights and their rights to Due Process, the Opposers fail to adequately demonstrate how their rights are violated.
Thus, the Federal Circuit affirmed TTAB’s decision and held that a surname may be considered registrable as a trademark should secondary meaning be successfully proven.
Full Schlafly v. The Saint Louis Brewery decision can be read here:
CIONCA Team Member1/4/2019 4:12:21 PM
In re: Tropp: New Matter in a Continuation Can Be Relevant to Written Description RequirementMore
On December 12, 2018, the United States Court of Appeals for the Federal Circuit (“Federal Circuit” or “CAFC”), with Prost as Chief Judge, made a nonprecedential decision in In Re: David Tropp (appeal number 2017-2503), vacating and remanding the decision of the originating venue of the case, the Patent and Trial Appeal Board (“Board” or “PTAB”). The Board had affirmed the Examiner’s decision rejecting claims 29-53 in U.S. patent application number 13/412,233 (“the ’233 application”) under 35 U.S.C. 112 for lack of sufficient written description support. The Federal Circuit determined in their decision that the Board had erred in its analysis.
The claims in question are directed towards a set of locks for securing travelers’ luggage, and methods of using the set of locks. Claim 29, the representative claim, is reproduced below:
“A set of locks for securing travelers’ luggage while facilitating an entity’s authorized luggage screening of luggage that the travelers have locked with said locks, without breaking the locks or the luggage, wherein the set comprises at least a first subset and a second subset each comprising plural locks, each lock in each of the first and second subsets having a combination lock portion for use by the travelers to lock and unlock the lock and in addition having a master key portion for use by the luggage-screening entity to unlock and re-lock the lock while the combination lock portion of the same lock remains in a locked state, wherein the same master key unlocks the master key portion of each lock in the first and second subsets, and different locks of the first and second subsets have combination lock portions with different plural numbers of dials, wherein:
the master portion of each lock in the first and second subsets of locks is configured for the same master key to unlock and re-lock the lock for the authorized luggage-screening independently of a locked state of the combination lock portion of the same lock;
the combination lock portion of each lock in the first and second subsets of locks is configured to unlock and re-lock the lock independently of a locked state of the master key portion of the same lock, using respective different combination dial settings of the plural number of dials as selected by of for the travelers;
each lock of a first subset of plural locks and a second subset of plural locks of the locks in the set has two or more combination lock dials;
the number of dials in each lock of the first subset differs from the number of dials in each lock of the second subset; and
each lock in the set has the same prominent indicia configured to uniquely differentiate the locks of the set from locks that are not configured for the luggage-screening entity to unlock and re-lock with the same master key for said authorized luggage-screening by said entity.”
Further, the “locks have two components: a combination lock portion for use by travelers, and a master key portion for use by a luggage-screening entity, like the Transportation Security Administration. The set of locks has at least two subsets with a different number of dials on the combination lock portion” (appeal number 2017-2503).
In the Board’s decision, it was found that the specification of the ‘233 application did not provide sufficient written description support by not describing “’a set of locks’ with various ‘subsets,’ but instead described a single special lock with different embodiments” (appeal number 2017-2503).
Of note is that the ’233 application is a continuation of U.S. patent application number 10/756,531 (“the ‘531 application,” now U.S. patent number 8,145,576), which is a continuation-in-part of U.S. patent application number 10/706,500 (“the ‘500 application,” now U.S. patent number 7,021,537). In each of these applications, the following description was included, directed to a: “special lock having a combination lock portion and having a master key lock, the master key lock portion for receiving a master key that can open the master key lock portion of any special lock of this type, the special lock designed to be applied to an individual piece of airline luggage.”
Furthermore, the ‘233 application includes the following language not included in the ‘500 application, the grandparent application: “[t]he phrase ‘any special lock of this type’ is intended to include special locks having a multiplicity of sub-types, such as different sizes, different manufacturing designs or styles, etc.” The Board addressed this only in a footnote, stating: “Priority Application 10/756,531, now US 8,145,576, does describe “‘any special lock of this type’ is intended to include special locks having a multiplicity of sub-types, such as different sizes, different manufacturing designs or styles, etc.” (Col. 4, ll. 21-24), but Application 10/756,531 is a [continuation-in-part] of US ’537. We find this description constitutes at least part of the added new matter of the continuation-in-part application.”
The appellant, Mr. Tropp, presented the argument that the Board disregarded this, and mistakenly concluded this language as not relevant, being new matter. The Federal Circuit deemed this footnote to be “confusing” and believed the appellant’s interpretation to be “the most plausible one.”
The Federal Circuit continued, “Even if it is new matter, the language in the ’233 application as filed is relevant to assessing compliance with the written description requirement. Cf. Waldemar Link v. Osteonics Corp., 32 F.3d 556, 558 (Fed. Cir. 1994) (“Claims containing any matter introduced in the CIP are accorded the filing date of the CIP application. However, matter disclosed in the parent application is entitled to the benefit of the filing date of the parent application.”).”
Thus, the Board’s decision was vacated and remanded.
Full In re: David Tropp decision can be read here:
Marin Cionca1/23/2019 9:45:30 PM
Patent Law Alert: All Sales of the Invention, Including Secret Sales May Invalidate a PatentMore
Patent Law Alert: All Sales of the Invention, Including Secret Sales May Invalidate a Patent
On January 22, 2019, the SUPREME COURT OF THE UNITED STATES issued a decision in HELSINN HEALTHCARE S. A. v. TEVA PHARMACEUTICALS USA, INC., ET AL., which addressed the question of whether secret sale of the invention that occurred more than one year before the effective filing date of the application for patent invalidated the issued patent under Leahy-Smith America Invents Act (AIA). The verdict? Yes, it does.
The Leahy-Smith America Invents Act (AIA) bars a person from receiving a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 35 U. S. C. §102(a)(1). This case required the Court to decide whether the sale of an invention to a third party who is contractually obligated to keep the invention confidential places the invention “on sale” within the meaning of §102(a).
More than 20 years ago, the Court determined that an invention was “on sale” within the meaning of an earlier version of §102(a) when it was “the subject of a commercial offer for sale” and “ready for patenting.” Pfaff v. Wells Electronics, Inc., 525 U. S. 55, 67 (1998). The Court did not further require that the sale make the details of the invention available to the public.
In this case, on January 30, 2003, nearly two years after Helsinn and its US distributor entered into a license agreement that granted the distributor the right to distribute, promote, market, and sell the 0.25 mg and 0.75 mg doses of palonosetron in the United States, Helsinn filed a provisional patent application covering the 0.25 mg and 0.75 mg doses of palonosetron. Over the next 10 years, Helsinn filed four patent applications that claimed priority to the January 30, 2003, date of the provisional application. Helsinn filed its fourth patent application—the one in dispute here—in May 2013, and it issued as U. S. Patent No. 8,598,219 (’219 patent). The ’219 patent covers a fixed dose of 0.25 mg of palonosetron in a 5 ml solution. Due to its effective date, the ’219 patent is governed by the AIA. See §101(i).
In 2011, Teva sought approval from the FDA to market a generic 0.25 mg palonosetron product. Helsinn then sued Teva for infringing its patents, including the ’219 patent. In defense, Teva asserted that the ’219 patent was invalid because the 0.25 mg dose was “on sale” more than one year before Helsinn filed the provisional patent application covering that dose in January 2003.
Because the Court determined that Congress, by using the phrase “otherwise available to the public” did not alter the prior settled meaning of “on sale” when it enacted the AIA, the Court held that an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential can qualify as prior art under §102(a), and thus, here, invalidate the ‘219 patent.
Inventors and their assignees need to be careful about activities engaged in before filing a patent application. Besides public disclosures and public use, a sale or offer for sale that occurs more than one year before the filing for patent, even when the sale is confidential, may invalidate the issued patent.
Full Court’s decision can be read here: https://www.supremecourt.gov/opinions/18pdf/17-1229_2co3.pdf
CIONCA Team Member2/5/2019 7:22:27 PM
TiVo Puts Tivoli on Pause: TTAB’s Decision in TiVo Brands LLC v. Tivoli, LLCMore
On December 31, 2018, the Trademark Trial and Appeal Board (“TTAB”) made decision in TiVo Brands LLC v. Tivoli, LLC. Tivoli, LLC (“Applicant”) applied to register TIVOTAPE and TIVOBAR in 2014 and 2016, respectively. In 2015, TiVo Brands LLC (“Opposer”) filed oppositions to both applications, alleging dilution by blurring and likelihood of confusion, as the Opposer’s registered marks are “TIVO and TIVO-formative marks.” Applicant denied all allegations. Both parties filed briefs and the Opposer filed a reply brief. An oral hearing was held in 2018 in TTAB’s jurisdiction.
“A successful claim for federal trademark dilution by blurring under Section 43(c) of the Trademark Act requires that a plaintiff plead and prove the following in a Board proceeding:
1. Plaintiff owns a famous mark that is distinctive;
2. Defendant is using a mark in commerce that allegedly dilutes plaintiff’s famous mark;
3. Defendant’s use of its mark began after plaintiff’s mark became famous; and
4. Defendant’s use of its mark is likely to cause dilution by blurring.”
TTAB specifically examined likeliness of dilution of TIVO word and design marks by Applicant’s TIVOTAPE and TIVOBAR, as dilution of these marks would hold scope over the other TIVO marks as well.
The degree of fame needed for dilution is higher than fame needed for likelihood of confusion. As such, “the court may consider all relevant factors, including the following:
(i) The duration, extent, and geographic reach of advertising and publicity of the mark, whether advertised or publicized by the owner of third parties.
(ii) The amount, volume, and geographic extent of sales of goods or services offered under the mark.
(iii) The extent of actual recognition of the mark.
(iv) Whether the mark was registered under the Act of March 3, 1881, or the Act of February 20, 1905, or on the principal register.”
TTAB somewhat favored finding the mark famous in view of factor one due to Opposer’s sparse records of self-advertising and self-publicity. In regard to factor two, TTAB concluded having neutral consideration as only statistics were provided without context. However, addressing factor three—which is perhaps the most significant of the four elements (Nike Inc. v. Maher)—TTAB found that “the extent of actual recognition of [Opposer’s] mark was pervasive and widespread” by 2010 (when Applicant adopted its mark), and thus, favored dilution of fame. Finally, factor four also favored finding a dilution of fame as both marks considered registered on the Principal Register as inherently distinctive and are over five years old.
Applicant made the argument that Opposer must establish that its fame was present by August 1972 as that is the year Applicant began using its TIVOLI mark. However, per TTAB, “the ‘involved’ mark may not change over time; in order for the defendant to ‘tack’ on its earlier use, the mark must be essentially the same at the time it is first used as at the time when it is used in association with the goods or services identified in the subject application or registration.” In this situation, TTAB expressed TIVOLI is not “legally equivalent” to TIVOTAPE or TIVOBAR. Finally, as the statute declares, “a plaintiff must show that its mark ‘is widely recognized by the general consuming public in the United States,’” and dilution can only be claimed by the “owner of a famous mark that is distinctive, inherently or through acquired distinctiveness.” Through submission of evidence and analyses, Opposer was able to prove distinction and maintain its fame post-2010 and throughout trial.
Furthermore, “In determining whether a mark or trade name is likely to cause dilution by blurring, the Board may consider all relevant factors, including the following:
(i) The degree of similarity between the mark or trade name and the famous mark.
(ii) The degree of inherent or acquired distinctiveness of the famous mark.
(iii) The extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark.
(iv) The degree of recognition of the famous mark.
(v) Whether the use of the mark or trade name intended to create an association with the famous mark.
(vi) Any actual association between the mark or trade name and the famous mark.
As TIVO is used as a source identifier, and as it is the most prominent portion of the Applicant’s marks, TTAB found that Applicant’s marks are sufficiently similar to Opposer’s marks. Addressing factor two, “TIVO is inherently distinctive in connection with Opposer’s listed goods and services.” Opposer also demonstrated its consumers recognize the marks and their source. Factor three also favors Opposer as Applicant could not satisfy TTAB in proving the marks’ use by any other third-parties. Regarding factor four, TTAB found that TIVO “is now primarily associated with the owner of the mark even when it is considered outside of the context of the owner’s goods and services,” favoring Opposer. Factor five was considered neutral as “no evidence suggests that Applicant intended to create an association with Opposer’s TIVO mark.” Finally, factor six favors Applicant as TIVOTAPE and TIVO have been in concurrent use without confusion amongst consumers.
In view of all evidence as a whole, TTAB sustained Opposer’s oppositions, concluding that Applicant’s marks are likely to dilute Opposer’s famous mark.
One must consider carefully what marks to adopt as any interference with earlier marks—especially marks that have established and maintained their fame—may cause hindrance.
Full TiVo Brands LLC v. Tivoli, LLC decision can be read here:
CIONCA Team Member2/19/2019 7:12:46 PM
Revised Guidance by USPTO on Patent Subject Matter Eligibility and Examining Computer-Implemented Functional ClaimsMore
In January 2019, the United States Patent and Trademark Office (USPTO) updated their guidance for determining patent subject matter eligibility under 35 U.S.C 101 and computer-implemented functional claim limitations under 35 U.S.C. 112. With these updates, the USPTO seeks to provide clarity on subject matter eligibility and on claims that contain functional language, particularly computer-implemented inventions.
Updated Guidance on 35 U.S.C. 101
Previously, the USPTO used the Alice/Mayo test, also known as a two-step test, to determine patent subject matter eligibility. This was a test used to analyze whether a claim is directed towards matter excluded from subject matter eligibility based on “judicial exceptions” to what is eligible – these include laws of nature, natural phenomena, and abstract ideas. If the claim does not fall under a judicial exception in step 1, then step 2 is used to analyze whether the claim contains an “inventive concept.” It seemed that a proper application of the Alice/Mayo test in a consistent and reliable manner has been difficult, and as a result, patent stakeholders were at times unable to reliably determine whether a particular invention could be patent eligible. This revised guidance aims to address the concerns of stakeholders, judges, inventors, and practitioners who have felt the need for a clearer and more consistent manner of applying 35 U.S.C. 101.
The USPTO’s 2019 Revised Patent Subject Matter Eligibility Guidance now updates, in two ways, the procedures for determining whether a patent claim or patent application claim is directed to a judicial exception under Step 2A of the Alice/Mayo test. The first update is that it is explained that abstract ideas can be grouped, such as in the following examples: mathematical concepts, certain methods of organizing human activity, and mental processes. Second, it is explained that a patent claim or patent application claim that recites a judicial exception is not necessarily directed to the judicial exception if the judicial exception is integrated into a practical application of that judicial application. On the other hand, a claim that recites a judicial exception without integrating that judicial exception into a practical application is still directed towards that judicial exception under Step 2A of the test. Then, the claim must be evaluated under Step 2B (as discussed above, the “inventive concept”) to fully determine the subject matter eligibility of the claim.
Updated Guidance on 35 U.S.C. 112
As noted by the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”), there seemed to be a rising issue of broad functioning claiming without proper structural support in the specification. As described in the Federal Register (cited below):
“Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1349 (Fed. Cir. 2015) (en banc) (overruling the Federal Circuit’s previous application of a ‘‘strong’’ presumption that claim limitations lacking the word ‘‘means’’ are not subject to § 112(f) to address the resulting ‘‘proliferation of functional claiming untethered to [§ 112(f)] and free of the strictures set forth in the statute’’); Function Media, LLC v. Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013) (‘‘ ‘Section [112(f)] is intended to prevent . . . pure functional claiming.’ ’’ (citing Aristocrat Techs. Australia Pty Ltd. v. Int’l Game Tech., 521 F.3d 1238, 1333 (Fed. Cir. 2008))); Ariad Pharm., Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1349 (Fed. Cir. 2010) (en banc) (discussing the problem of functional claims defining a genus that ‘‘simply claim a desired result . . . without describing species that achieve that result’’).”
The Federal Circuit acknowledged that in light of some of its prior opinions, “a heightened bar” was established, in “overcoming the presumption that a limitation expressed in functional language without using the word ‘‘means’’ is not subject to 35 U.S.C. 112(f) and concluded that such a heightened burden is unjustified.” The Revised Guidance seeks to address these issues when analyzing a claim under 35 U.S.C. 112.
The Guidance for 35 U.S.C. 112 first outlines the process for claim interpretation, including determining whether a claim should be interpreted as a means-plus-function claim under section 112(f). Next, the guidance discusses indefiniteness under 35 U.S.C. 112(b). For a computer-implemented claim invoking 35 U.S.C. 112(f), the specification should disclose an algorithm for performing the claimed specific computer function. This can be, as examples, “a mathematical formula, prose or flow chart or in any other manner that provides sufficient structure.” Otherwise, the claim is indefinite under 35 U.S.C. 112(b). The Guidance also reviews the requirements for enablement and written description, and in particular, states that “a specification must describe the claimed invention in sufficient detail (e.g., by disclosure of an algorithm) to 16 establish that the applicant had possession of the claimed invention as of the application filing date.”
The USPTO is accepting comments about these updates, and the deadline for submission of comments is March 8, 2019.
The Federal Register Notices in which the above are announced can be found at:
The Revised Guidance for 101 and 112 can be found at:
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law P.C.
Marin Cionca3/1/2019 9:36:50 PM
USPTO Director Andrei Iancu Visits Orange County!More
USPTO Director Andrei Iancu Visits Orange County!
Last week, on Thursday, February 21, 2019, United States Patent and Trademark Office (USPTO) Director Andrei Iancu visited Orange County. This happened at the invitation of OCIPLA (Orange County Intellectual Property Law Association) in coordination with LAIPLA (Los Angeles Intellectual Property Law Association) and University of Southern California (USC). The OCIPLA Board of which I am a member worked diligently to make the visit a great event. More than 80 people, mostly OC IP practitioners, signed up for the event.
As known, Director Iancu also holds the position of Under Secretary of Commerce for Intellectual Property. In that capacity he is apparently also an advisor to the President of the United States, Donald J. Trump, on IP Law issues, such as the IP dispute with China.
Prior to assuming the above roles, Director Iancu was the Managing Partner of the law firm Irell & Manella LLP. In his long IP law career, he represented clients in various technologies, such as medical devices and genetic testing. He was an IP litigator, but he was also involved in prosecution, licensing and intellectual property due diligence.
I had the honor to introduce USPTO Director Andrei Iancu at the special event organized by OCIPLA. I have posted some pictures from the event on my LinkedIn page at https://www.linkedin.com/feed/update/urn:li:activity:6505188487954857984/ .
OCIPLA is a great IP Law professional organization. If you are a law professional in Orange County, California, or a law student who wants to practice IP law, and not already a member, I encourage you to join OCIPLA as soon as possible. You can find more information about the OCIPLA on its website at https://www.ocipla.org/ .
Director Iancu spoke on several recent developments at the USPTO, including the new Examiner Guidance on Section 101 (patentability of software inventions, abstract ideas, law of nature and natural phenomena). He emphasized that the new guidance clarifies for the examiners that an invention is patent eligible as long as it is a “practical application” of the abstract idea, law of nature or natural phenomenon. He hinted, and most observers including myself seem to agree, that the new guidance makes it easier to find that such patent applications overcome patent eligibility challenges from the patent examiners. This is great news for patent applicants and their patent attorneys!
One other particular point of interest for all IP lawyers practicing before the USPTO in trademark cases, which was shared by Director Iancu, is that the USPTO is working toward implementing the new rule requiring all foreign trademark applicants to be represented by a US attorney. The implementation of the new rule is expected to be completed within 2-3 months. This is another great news for all US IP Lawyers as the rule will generate more foreign clients!
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law P.C.
CIONCA Team Member3/21/2019 3:49:43 PM
Defining Inherency: A Decision in Personal Web Technologies, LLC v. Apple, Inc.More
On March 8, 2019 the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) made decision in PersonalWeb Technologies, LLC v. Apple, Inc. An inter partes review (IPR) petitioned by Apple, Inc. (“Apple”) in 2013 resulted in Claims 24, 32, 81, 82, and 86 of U.S. Patent No. 7,802,310 (“the ‘310 patent”) being deemed unpatentable as obvious, in view of U.S. Patent No. 5,649,196 (“Woodhill”) and U.S. Patent No. 7,359,881 (“Stefik”). PersonalWeb Technologies, LLC (“PersonalWeb”) appealed the Patent Trial and Appeal Board’s (“the Board’s”) decision in 2015, and the Federal Circuit vacated and remanded the Board’s obviousness finding due to inadequate analysis. On remand, the Board maintained its obviousness finding based on inherency and motivation-to-combine, adding Woodhill to its first reference, Stefik. PersonalWeb appealed again and the Federal Circuit had jurisdiction.
The ‘310 patent teaches a data processing system in which (i) a unique content-based identifier is assigned to a data item and (ii) the content-based identifier is compared to a plurality of values, authorization or lack thereof to the data item is determined contingent on the existence of correspondence to one of said plurality of values, and, based on the previous outcome, not allowing a second computer access to the data item if access is not authorized.
The Board utilizes Woodhill and Stefik to maintain its finding of the ‘310 patent’s unpatentability. “Woodhill discloses a distributed management system for backing up and restoring data files” in which each byte of data is assigned an identifier. Thus, the Board found that Woodhill inherently teaches comparing an identifier to a plurality of values. Furthermore, “Stefik discloses an authentication system for controlling access to digital works,” using a ‘digital ticket’ entitling user access. Agreeing with Apple’s arguments, the Board found that “access provided in Stefik would necessarily require a comparison between the unique identifier and other values to see if a match can be obtained.” Considering the above, the Board found the ‘310 patent unpatentable due to obviousness on the bases of inherency and motivation-to-combine.
However, the Federal Circuit does not agree. Although Woodhill may possibly utilize an identifier lookup table to locate matches, the possibility itself is not enough. “As PersonalWeb suggests, an equally plausible…understanding of Woodhill is that Woodhill’s system uses conventional file names and locations to locate files and the Binary Object Offset field to locate a given binary object within a file…Woodhill does not disclose searching for a file based on a content-based identifier.” Rather, Woodhill collects information from a database.
Thus, the features that Apple and the Board rely on do not necessarily exist, and as such, the Board’s reliance on inherency was improper. The Federal Circuit therefore reversed the Board’s finding of obviousness over Woodhill in view of Stefik.
Inherency in an obviousness claim is only valid if the allegedly-inherent feature is a naturally occurring result. The mere possibility of the result or feature is not enough to demonstrate inherency as a basis for obviousness.
Full Personal Web Technologies, LLC v. Apple, Inc. decision can be read here:
CIONCA Team Member4/3/2019 7:25:37 PM
The Patent Trial and Appeal Board (PTAB) Designates Three Decisions PrecedentialMore
On March 18, 2019, the Patent Trial and Appeal Board (“Board”) announced the designation of three decisions as being precedential. Two of the three decisions involve the limited situations in which live testimony can be used during a PTAB proceeding. The first is K-40 Electronics, LLC v. Escort, Inc., Case IPR2013-00203 (PTAB May 21, 2014) (Paper 34) (“K-40”). K-40’s order provided factors that may be considered in making the determination of whether live testimony could be permitted. Generally, the Board does foresee live testimony being necessary in most situations. Live testimony would be allowed “under very limited circumstances,” wherein cross-examination of witnesses may be ordered. Here, the sole inventor of the patent in the proceeding was also the principal fact witness. “Through his declaration testimony in both cases, Patent Owner attempts to antedate the only two references (Hoffberg and Fleming III) relied on by Petitioner in its challenge to patentability. Mr. Orr’s testimony is, therefore, key, and may well be case-dispositive.” This, along with the inventor being a fact witness rather than an expert witness, is what was considered in the Board’s decision.
The second decision involving live testimony is DePuy Synthes Products, Inc. v. MEDIDEA, L.L.C., Case IPR2018-00315 (PTAB Jan. 23, 2019) (Paper 29) (“DePuy”). DePuy’s order determined that the testimony of an inventor at the oral hearing is considered new evidence, and it is not permitted if a declaration from the inventor was not previously provided. This would thus be considered “forbidden under our Trial Practice Guide. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“No new evidence and arguments. A party may rely upon evidence that has been previously submitted in the proceeding and may only present arguments relied upon in the papers previously submitted. No new evidence or arguments may be presented at the oral argument.”).”
.com, Inc. v. Uniloc Luxembourg S.A., Case IPR2017-00948 (PTAB Jan. 18, 2019) (Paper 34) (“Amazon”). This decision distinguished between the treatment of amended claims versus the treatment of existing claims in inter partes review, by determining that 311(b) does not preclude a petitioner from raising, or the PTAB from considering, other grounds of unpatentability, including § 101, as to substitute claims not yet part of a patent, in the context of a motion to amend. Here, the patent owner proposed three amended claims, which the Board found to be unpatentable. In addition to this, the Board denied the Motion to Amend, because these claims were directed to non-statutory subject matter under 101.
The patent owner made the argument that “by overruling the Board’s practice of placing on the patent owner the burden of showing patentability of amended claims in Aqua Products Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) (en banc), the Federal Circuit also foreclosed review of proposed amended claims under § 101. Req. 3–4. Under Patent Owner’s theory, Board cases such as Ariosa Diagnostics v. Isis InnovationLimited, Case IPR2012-00022 (PTAB Sept. 2, 2014) (Paper 166), considered § 101 only as part of a patent owner’s burden to show patentability of the amended claims, and the Federal Circuit’s removal of that burden “overruled the very basis for Ariosa Diagnostic’s holding that a motion to amend must address patent eligibility under § 101.” Req. 3–4. H.”
The Board countered this by stating that, as they had previously explained in their “Final Written Decision, Aqua Products makes clear that Patent Owner does not bear the burden of persuasion on issues of patentability in a motion to amend,2 but does not foreclose an analysis of whether substitute claims comply with § 101.”
Full K-40 Electronics, LLC v. Escort, Inc. can be read here:
Full DePuy Synthes Products, Inc. v. Medidea, L.L.C. can be read here:
Full Amazon.com, Inc., Amazon Digital Services, Inc., Amazon Fulfillment Services, Inc., Hulu, LLC, and Netflix, Inc. v. Uniloc Luxemborg S.A. can be read here:
Marin Cionca4/17/2019 3:48:33 PM
What Qualifies as Proper Use in Commerce Claim in a USPTO Trademark Application?More
What Qualifies as Proper Use in Commerce Claim in a USPTO Trademark Application?
In a trademark or service mark application filed with the USPTO, and which is based on use in commerce, the mark must be in used in commerce on or in connection with all the goods and services listed in the application as of the application filing date. Use in commerce means use of the mark in all commerce which may be lawfully regulated by the U.S. Congress. An example of use in commerce activity are sales to out-of-state customers and shipment of the sold goods, having the mark on them, across state lines, to the customers’ out-of-state addresses (e.g., from California to Arizona). Let’s look at some more specific examples below.
The mark used in association with services is called a Service Mark. For services, the mark must be used to “render” those services in commerce. Advertising the services using the mark to potential customers from more than one state is typically enough (e.g., catalogs and advertisements shipped to out-of-state customers). Also, if not already providing the services, the applicant must be ready to provide the services. Offering services via the Internet has been held to constitute use in commerce, since the services are available to a national and international audience who must use interstate telephone/internet lines to access a website. Certain services such as restaurant and hotel services, although they are typically provided locally (e.g., in one city only) have been deemed to be rendered in commerce because they are activities that have been found to be within the scope of the 1964 Civil Rights Act, which is predicated on the commerce clause, and thus such services can be regulated by the U.S. Congress.
The mark used in association with goods is called a Trademark. For goods, things are more complicated. Goods (e.g., computers) must have the mark on them, or on the packaging, or the mark has to be in a product display or on a webpage next to the goods, where the customers can purchase the goods. A good example of use-in-commerce of the mark on goods (e.g., shoes) is applying the mark to the goods or to the packaging (e.g., via a sticker) selling the goods to out-of-state customers and shipping the sold goods to the customers’ out-of-state addresses (e.g., from California to Arizona).
What about a sale in California to customers from Arizona who came in your California store, bought the goods and took them home themselves? That is likely not sufficient to claim use in commerce. What about advertising the goods, such as on a website? Not enough. Advertising alone may be enough for services, but not enough for goods. What about when you import goods with the trademark on them from for example China with the mark affixed to the goods or their packaging? If you also sell the goods with the trademark on them after you import them, then claiming use in commerce is likely appropriate. What about when you export the goods, let’s say, to Europe? That is likely use in commerce, as the export activities can be regulated by the U.S. Congress. What about transportation by the trademark owner of the goods, with the trademark on them, across state lines? If a sale of the goods follows, use in commerce can likely be claimed. If a sale does not follow, or precede the interstate transportation, i.e., a sale of the goods never occurs, but the goods with the trademark on them are exposed to the public (e.g., at a trade show) in addition to being transported across state lines, use in commerce claim is likely appropriate. Note however that the real goods have to be transported and exposed to the public. A mock-up of the product or a picture of the product for example would not do.
Marin Cionca, Esq.
Registered Patent Attorney
USPTO Reg. No. 63899VERIFY