Thinking about Brunetti – Prof. Ned Snow has explained his view that the limit on registering scandalous marks should be upheld — so long as the term scandalous is limited to just marks communicating “sexually-explicit or vulgar content.” Ned Snow, Denying Trademark for Scandalous Speech, 51 UC Davis L. Rev. ___ (2018). As I suggested in a prior post, the “scandalous” nature of the mark would be largely viewpoint neutral and therefore more likely to pass through Supreme Court scrutiny. Snow goes on to explain why the government should be involved — think of the children!:
The apparent government interest is to protect the psychological wellbeing of minors, given that harmful effects follow from viewing pornography. And trademarks appear everywhere: they are openly displayed in stores, presented on billboards and road signs, delivered to the mailbox, embedded in movies and television, advertised throughout the internet (e.g., in the app store, in an unsuspecting email, on the Amazon website). Trademarks have become as pervasive as commerciality itself in the modern age. Consequently, scandalous marks can easily reach children. Withholding registration for them furthers the protection of children from psychological harm
In its brief, the USGov’t argues further that – even these days of pornography-rich internet, the Government continues to have a strong interest in excluding “lewd pictures, profanity, and sexually explicit imagery from non-public and limited public fora.”
A city government might decide, for instance, that graphic sexual imagery should not appear on advertisements on city buses. Or the federal government might impose similar restrictions on expression within a military cemetery. If (as the court of appeals concluded) the government has no legitimate interest in protecting the public from scandalous images, the constitutionality of such reasonable regulations might be called into doubt.
I’ll note here that both Snow and the Government focus on a traditional US view of what is Scandalous — foul language + nudity. These documents entirely skip over what I see as scandalous — i.e., actual scandals and corruption. If the government is going to use its moral authority to tamp out scandalous activity — that might be right place to start instead of FUCT clothing and DYKES ON BIKES.
“The United States Patent and Trademark Office (USPTO), a progressive organization at the forefront of intellectual property issues around the world, is seeking a high performing professional to join its Senior Executive Team as Chief Administrative Patent Judge (Chief Judge).”
Like other members of the PTAB, the Chief Judge is appointed by the Secretary of Commerce in consultation with the USPTO Director.
Morality judgments have been a core governmental activity for millennia. However, when it comes to limiting speech – morality is unlikely to be a sufficient justification to overcome today’s expansive Free Speech principles.
The Lanham Act requires the USPTO to bar registration for marks that are either “immoral” or “scandalous.” 15 U.S.C. 1052(a). A separate portion of the provision prohibits registration of marks that “may disparage . . . persons” — but the Supreme Court found that portion uncontitutional in Matal v. Tam, 582 U.S. ___ (2017). In Brunetti, the Federal Circuit expanded Tam by holding that the prohibition on registering “immoral” or “scandalous” marks is also an unconstitutional. The court suggested that the government could draw some lines – such as barring obscene marks — but those dilenations are the province of Congress.
In Brunetti’s particular case, his admittedly vulgar mark FUCT was originally refused registration on scandalous grounds. On appeal, however, the Federal Circuit reversed.
Now, the US Government has petitioned the Supreme Court for Writ of Certiorari — arguing that:
Under the proper analysis, the First Amendment does not prohibit Congress from making vulgar terms and graphic sexual images ineligible for federal trademark registration.
[Read the petition: Brunetti (Pet)]. The petition asks one straightforward question:
Whether Section 1052(a)’s prohibition on the federal registration of “immoral” or “scandalous” marks is facially invalid under the Free Speech Clause of the First Amendment.
In some ways, the case here looks to be open-and-shut — since the Supreme Court just held in 2017 that disparaging limit is unconstitutional. However, a disparaging mark is – by definition – directed toward a particular viewpoint and therefore more suspect than a mark that is simply vulgar. In addition, one problem with Tam is that there was no majority opinion explaining the court’s reasoning. On this second point, the petition explains:
Although this court recently concluded in Matal v. Tam, 137 S.Ct. 1744 (2017), that a different provision of Section 1052(a) was facially unconstitutional, no rationale garnered the assent of a majority of the Court, and neither the of the lead opinions in Tam endorsed the approach that the court of appeals adopted here.
The petition here was a joint submission by the US Solicitor General and the USPTO, including acting solicitor Joseph Matal who was acting director at the time of the Tam decision.
= = = =
Notes: Prior to Brunetti, courts have largely enforced the “immoral” and “scandalous” limitations — treating the two as a single category of prohibition. My favorite case is In re Fox, 702 F.3d 633 (Fed. Cir. 2012) (finding the mark for a rooster-shaped lollipop scandalous since it was intended to refer to a “cock sucker”). Scandalous marks, include those “shocking to the sense of propriety, offensive to the conscience or moral feelings or calling out for condemnation.” McGinley.
The Virnetx v. Apple patent battle has been running since 2010. Virnetx won its first verdict against Apple in 2012. The court in that case required two more jury trials — but Virtnetx won all three and the $300 million damage award is pending appeal before the Federal Circuit.
Apple redesigned its FaceTime and VPNOnDemand products back in 2012. Rather than adding the redesigns to the original case, Virnetx filed a new lawsuit (2012). In April 2018, a jury awarded an additional $500 million in damages and found that Apple’s infringement was willful.
Now, Judge Schroeder (E.D.Tex.) has issued his post-trial opinion that confirms the verdict and damage award (with interest), but refuses to grant any injunction or enhanced damages for willfulness. In particular, the court found no irreparable harm due to ongoing infringement; and – on willfulness – was pursuaded (despite the jury verdict of willfulness) that “Apple maintained a good faith belief that its redesigns did not infringe.” The court did grant an ongoing royalty of $1.20 per unit – which was the standard royalty rate set by the jury for back damages.
Read the decision here: Apple500Loss. This case will certainly be appealed.
The appeal here stems from three Inter Partes Review (IPR) proceedings — each cancelling the claims of aseparate Worlds’ patent. U.S. Patent Nos. 7,945,856; 8,082,501; and 8,145,998. The Worlds’ patents involve methods and systems for displaying avatars within a virtual environment and claim priority back to a 1995 provisional patent application.
The appeal here does not focus on the merits of the case but rather whether the IPR proceedings were time barred. I.e., whether the patentee’s still-pending lawsuit against Bungie’s contracting partner Activision will block Bungie from pursuing its IPR.
35 U.S.C. § 315(b) is fairly clear — “an inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”
Here, the petitioner Bungie was never sued for infringing the patents. However, game distributor Activision was sued for infringement 2012 for its World of Warcraft games. Bungie develops virtual-world games such as Halo — and distributes those games through a deal with Activision. Back in 2014, Worlds notified Activision that it planned to add the Bungie products to the lawsuits. Within six months, Bungie filed the IPRs at issue here. The Activision lawsuit is ongoing – though it was conveniently stayed pending outcome of the Bungie IPR.
In the IPR, the patentee Worlds requested discovery on the connection between Bungie and Activision in order to determine whether Activision could be considered a “real party in interest” or “privy.” However, that request was summarily denied and the PTAB concluded that the patentee “has not demonstrated that Activision is an unnamed real party in interest in this proceeding.”
On appeal, the Federal Circuit has vacated and remanded — holding that the PTAB should have investigated the relationship between the IPR petitioner (Bungie) and the prior litigant (Activision) and that the PTAB should have explained its reasoning.
Absent from the Board’s analysis of the real-party-in interest issue is any clear statement of what, if any, burden framework the Board used to analyze the evidence presented in these IPRs, including an identification of which party the Board viewed as bearing the burden of persuasion.
In its decision, the court made several important findings:
An “IPR petitioner bears the ultimate burden of persuasion to show that its petitions are not time-barred under § 315(b).” However, an IPR petitioner’s identification of the real parties in interest in the petition papers will ordinarily serve as prima facie evidence meeting this burden. At that point, the patentee must produce some evidence to support its contention otherwise.
Note here, that the initial statement by the patentee does not create a “presumption” but only serves as an initial starting point for the analysis. The court explains: “[i]nstead of viewing this as a presumption, we simply view this as practical. In short, we see no reason for the Board to question an IPR petitioner’s identification of the real parties in interest unless and until a patent owner has chosen to raise the issue.”
In order to properly “raise the issue”, a patentee will need to provide “some evidence” showing that a particularly third-party should be named as a real-party-in-interest. The court expressly refused to state the “quantum” of evidence required — but suggested that it might follow the PTAB’s prior ruling that evidence should “reasonably brings into question the accuracy of a petitioner’s identification of the real parties in interest.” Note — this requirement is clearly less than a preponderance of the evidence.
Here, the court found that the patent owner “presented more than enough evidence to sufficiently put this issue into dispute.” The evidence here was:
Worlds pointed to a particular party it saw as a real-party-in-interest — Activision.
Worlds provided evidence of a development-distribution agreement between petitioner Bungie and Activision. This agreement placed an obligation on Bungie to clear-rights for its products distributed by Activision and also provided Activision with ability to review and approve the clearance;
Worlds provided evidence that it had provided notice to Activision regarding its intent to add Bungie products to the Activision litigation; and
The patents challenged by Bungie are the exact same patents that are the subject matter of the pending litigation with Activision.
The Federal Circuit saw this evidence as sufficient to force the Board’s hand and no longer simply rely upon the petition’s statement in a conclusory judgment. Rather, at that point the Board should have considered the evidence and expressly made “the factual determinations necessary to evaluate whether Bungie had satisfied its burden to demonstrate that its petition was not time-barred based on the complaints served upon Activision, the alleged real party in interest.”
On remand, the Board will reconsider its the real-party-in-interest decision — placing the ultimate burden of persuasion on the IPR petitioner.
1. A method for enabling a first user to interact with second users in a virtual space, wherein the first user is associated with at first avatar and a first client process, the first client process being configured for communication with a server process, and each second user is associated with a different second avatar and a second client process configured for communication with the server process, at least one second client process per second user, the method comprising:
(a) receiving by the first client process from the server process received positions of selected second avatars; and
(b) determining, from the received positions, a set of the second avatars that are to be displayed to the first user;
wherein the first client process receives positions of fewer than all of the second avatars.
Bhagat v. Iancu is a newly filed petition for writ of certiorari now pending before the United States Supreme Court. (Case No. 18-277). Bhagat is the founder and CEO of Asha Nutrition and is seeking to patent a lipid-formulation – that contains a mixture of omega-6 and omega-3 faty acids at a ratio of 4:1 or greater.
The USPTO refused to issue the patent finding the claims barred both by on eligibility (101) and anticipation (102) grounds. On appeal, the Federal Circuit affirmed. The 101 denial is most interesting. The PTAB found that that claimed fatty-acid mixtures already occur naturally in walnut oil and olive oil. And, although the claims require (via disclaimer) that the mixture of oils come from different sources, the Board found them to be directed to a natural phenomenon. On appeal, the Federal Circuit agreed — finding that the original ingredients of walnut oil and olive oil are natural products and the mixtures were not shown to be a “transformation of the natural products, or that the claimed mixtures have properties not possessed by these products in nature.” [Query – are the the oils themselves product of nature?]
This opinion follows Funk Bros. Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948). In that case, the Supreme Court explained that
The [claimed] combination of species produces no new bacteria, no change in the six species of bacteria, and no enlargement of the range of their utility. . . . They serve the ends nature originally provided and act quite independently of any effort of the patentee. . . .
The qualities of these bacteria, like the heat of the sun, electricity, or the qualities of metals, are part of the storehouse of knowledge of all men. They are manifestations of laws of nature, free to all men and reserved exclusively to none. He who discovers a hitherto unknown phenomenon of nature has no claim to a monopoly of it which the law recognizes. If there is to be invention from such a discovery, it must come from the application of the law of nature to a new and useful end.
The new petition raises three questions:
1. a. Whether the Federal Circuit erred in finding petitioner’s patent application claims unpatentable under 35 U.S.C. § 101 because the court failed to apply the correct patent eligibility standard under this Court’s conflicting holdings in Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U.S. 127 (1948) and Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576 (2013).
1. b. Whether the Federal Circuit erred in finding petitioner’s patent application claims unpatentable under 35 U.S.C. § 101 because the court did not apply the patent-eligibility standard set forth in Myriad.
2. Whether the Federal Circuit erred in affirming the USPTO’s decisions under 35 U.S.C. §§ 101 and 102(b) because it failed to apply “meaningful review” to that decision, as required by the Administrative Procedure Act.
The broadest claim in contention reads as follows:
65. A lipid-containing formulation, comprising a dosage of omega-6 and omega-3 fatty acids at an omega-6 to omega-3 ratio of 4: 1 or greater, contained in one or more complementing casings providing controlled delivery of the formulation to a subject, wherein at least one casing comprises an intermixture of lipids from different sources, and wherein (1) omega-6 fatty acids are 4-75% by weight of total lipids and omega-3 fatty acids are 0.1-30% by weight of total lipids; or (2) omega-6 fatty acids are not more than 40 grams.
In this case, TS patents (inventor Sheng Tai Tsao) has asserted four patents against Yahoo!: U.S. Patent Nos. 9,280,547 (“the ’547 patent”); 8,799,473 (“the ’473 patent”); 8,713,442 (“the ’442 patent”); and 8,396,891 (“the ʼ891 patent”). All four patents are related to remote hosting. When a user logs-in, the system creates a per-user-session hierarchical folder list that is sent to the user’s local device. When a user logs-out, the hierarchical list is deleted from memory. (2002 priority dates).
The district court found all the asserted claims invalid under 35 U.S.C. § 101 following the Alice/Mayo test as applied to abstract ideas. In Alice Step-Two, the district court concluded that the claimed elements and arrangements were all “conventional” and “generic.” In particular, the district court dismissed the case on the pleadings — ruling that the patent is so clearly invalid that the complaint failed to state a plausible claim (Fed.R.Civ.Pro. 12(b)(6)). At that stage, the district court did not consider any evidence or expressly draw factual conclusions. On appeal, the Federal Circuit affirmed without opinion (R.36).
In its new en banc petition, TS Patent has asked the Federal Circuit to reconsider in light of its recent decisions in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) and Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354 (Fed. Cir
2018). Leading attorney Matthew Dowd writes:
When a U.S. patent—in particular, a patent issued after Alice Corp. Pty Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014)—states that the claimed computer-based invention yields technical improvements over existing systems, can a district court make factual findings contrary to the patent’s specification at the pleading stage and dismiss a complaint for patent infringement under Rule 12(b)(6)?
TSPatentEnBanc. The Federal Circuit is struggling internally with this issue, but I do not expect TS to get a majority of the judges — especially since Judges Newman and Linn were on the original R.36 panel.
What is the right answer here: Our system needs a relatively quick and cheap way to cancel patents that are clearly invalid and should not have issued. Without a better solution, the Supreme Court functionally blessed this approach — although effective it has some major defects. Barring major revisions of eligibility analysis, the better approach here is to open the window for post-grant review proceedings.
Intellectual Ventures I LLC v. T-Mobile USA, Inc. (Fed. Cir. 2018)
Delaware Chief Judge Stark ruled on summary judgment that T-Mobile did not infringe IV’s U.S. Patent No. 6,640,248. The district court also found claim 20’s means-plus-function limitation left that claim indefinite. On appeal, the Federal Circuit reversed claim construction and thus vacated on non-infringement — however, the court affirmed on indefiniteness.
Indefiniteness: The indefiniteness doctrine is codified within 35 U.S.C. 112(b), which requires each claim be “particular” and “distinct.” The Supreme Court’s most recent statement on the doctrine requires that claims delineate their scope with “reasonable certainty.” Although I have not checked into the stats recently, my somewhat educated prior is that the district courts have followed the Federal Circuit’s lead in usually giving issued patents a ‘pass’ on definiteness — much like utility. The one major exception is the area of of means-plus-function claims.
35 U.S.C. 112(f) allows for claims to include particular elements “expressed as a means … for performing a specified function without the recital of structure, material, or acts in support thereof.” However, when MPF style is used the Federal Circuit requires that at least one example of a the corresponding omitted structure be described within the patent specification. When no corresponding structure is provided, the respective claim is deemed invalid as indefinite.
This case involved a means-plus-function that rendered a claim indefinite — but the court did not actually reach the question of corresponding structure. Rather, the court determined that the claimed function was too ambiguous.
IV’s asserted claims are directed to a network system designed for non-net-neutrality applications. When allocating network resources, the system will consider the quality of service (QoS) needed for a particular application and allocate resources (bandwidth) to prioritize speed where needed. Claim 20 requires an “allocating means for allocating resources to said IP flow … so as to optimize end user application IP QoS requirements of said software application.”
The district court found the claimed function indefinite. In particular, the court noted that specification’s description of QoS as “subjective” according to a user’s “individual preferences” and that description lacked “adequate guidance as to the meaning of ‘optimize.'”
On appeal, the Federal Circuit presumably performed a de novo review, but affirmed — particular zeroing in on its precedent requiring “objective boundaries.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371 (Fed. Cir. 2014) (“The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.”). Here, the court interpreted “optimizing QoS” as akin to the invalid “aesthetically pleasing” limitation of Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005). According to the court, both elements are “purely subjective” and depend wholly upon each user’s personal opinions.
We see no error in the district court’s conclusion that this function is indefinite or that because the function is indefinite, there was no need to evaluate structure. We have similarly held a means-plus-function limitation indefinite without looking to structure where a term of degree in the function was sufficient to render the claim indefinite.
I am happy to announce that Damian Porcari has been sworn-in as the new USPTO Midwest Regional Office director in Detroit. Porcari has been a longtime fixture in the Michigan intellectual property circles — and “retired” from his position as Director of Licensing and Enforcement for Ford in 2017 after 28 years with the company. Congratulations!
Guest Post by Professor Paul M. Janicke, University of Houston Law Center. In 2017, Prof. Janicke was awarded the Tom Arnold Lifetime Achievement Award by the State Bar of Texas. – DC
I have now been a registered patent attorney for 50 years, spending 21 of them in private patent litigation practice before joining the law faculty at the University of Houston. Looking back on it all, and on the posture of patent litigation in the past few years, I feel it is time to consider some major surgery on the patent statute, re-envisioning what we are trying to accomplish. Lawyers presently active in the field have told me enforcing a United States patent is nigh unto impossible today. You usually have to fight off multiple IPRs in the Patent & Trademark Office, during which time any infringement suits you have filed are likely stayed. If your client’s patents survive the PTO proceedings, you then have to battle against the much wider field of prior art established by the America Invents Act. For example, foreign patents used to be effective as prior art as of their grant or publication dates; now they are secret prior art as of their foreign filing dates. Time bars of public use and on sale, formerly limited to U.S. activities, are now expanded to world-wide events. And some kinds of prior art were removable by showing an earlier invention date, but that option is now gone. Meanwhile the remedies section, §271, has not changed in any meaningful way. No wonder patent infringement suits filings have dropped 30% as of June 30 of this year, compared to two years earlier.
I do not contend that fewer patent suit filings are necessarily a bad thing. A plausible argument can be made that any well-functioning law system should generate a smaller number of court fights. In the patent law world, that could signify better quality patents with everyone respecting them, resolving any minor disagreements by ADR, and filing zero infringement cases. However, the present situation suggests something else is afoot. A new look at what we are trying to accomplish by way of promoting progress in the useful arts may be in order. Many of the provisions in the current law are borrowed from the patent statutes of more than a century ago. Some may have been well-intentioned in their time and may even have some measure of residual benefit today, but experience shows that many of them are causing more trouble than they are worth. Maybe it is time to jettison these provisions. In these pages over the coming weeks I will present my proposals for streamlining the patent system in that way. I will try to balance them between those favoring accused infringers and those helping patent owners. To readers steeped in patent property philosophy, all of them will likely be labeled heretical.
The proposals are intended to be compromises, some favoring patent owners and some favoring infringers, whom we will no longer consider criminals. The two most central items are these:
(1) Continue to allow prosecution of as many claims as desired, but after allowance require the applicant to choose no more than three for issuance. During the first three years from grant, attacks on these claims can be made in the PTO or the courts, to the same extent as now. After three years from the issue date, validity of the claims becomes incontestable.
(2) In exchange for (1), the remedy of permanent injunction disappears, except in ANDA cases. It will be replaced by a revised financial remedy: equitable sharing in the infringer’s revenues from the infringing activity, as set by the judge.
Proposal (1) is admittedly borrowed from the trademark law of incontestability, and may strike some as unfair to late entrants into a market. Those companies will find the validity questions foreclosed. However, my sense is that we need to cut down on the seemingly endless attacks on patent validity, and a fair sharing system seems to me a sensible way of going about it. (I do not expect hurrahs! from the patent litigation bar.)
I recognize that prong (2) can be said to make a patent no longer intellectual “property,” since there will usually be no explicit power to exclude others. This may be a heresy, but for progress of the useful arts maybe this is better. To start with, in real life patent cases we seldom see permanent injunctions going into effect any more. Government contractors are immune from them, and after the Supreme Court’s eBay decision, when they are granted by a court they are usually bought out by a financial payment arrangement instead. So maybe an equitable sharing remedy will work better for practically promoting the progress of the useful arts. The originator gets rewarded, and the benefits of the invention flow more widely and sooner. (I do not expect hurrahs! from the patent licensing bar.)
I have several other heresies in mind, which I intend to present a few at a time in the coming weeks.
