Happy Thanksgiving to Patently-O readers out there — new and old!   I am grateful to you for all your kindness, trust, and support through the years. Let me know how I can help in the future!

If you are shopping for holiday gifts for the patent attorney in your life (or perhaps self-indulging), here are a few gift ideas.

1. Autonomous Vacuum: If they don’t have a robot vacuum. Oh my.  Any real patent law firm will have a few of these always skirting around. The iRobot Roomba j7 is a great option.
2. Dyson Airwrap.  This device is super cool and “makes hair styling a breeze”(TM).  It is also the subject of dozens of patent and trademark infringement lawsuits with Dyson relentlessly pursuing knock-off brands.  Knock-offs are  still profitable because this baby costs $$$.
3. Pad and Paper. Many of us work on computers all day and it is helpful to get offline whenever possible. But, searching for notebooks online is pretty tricky because Google thinks we’re wanting to buy a computer.  The German-made LEUCHTTURM1917 cuts through the tech with 251 numbered pages of DOTTED paper for your dreams, thoughts & ideas.
4. Patent Art. I have a Wright-brothers patent on the wall in my office as well as a couple of products that I helped protect back-in-the-day.  There are lots of suppliers of these.  I bought mine from My Patent Prints as with most things, Amazon also has a wide variety.
5. Spill-Free Mug: I ride my bicycle to work and so a non-spillable mug is important. This Contigo Coffee Mug takes a licking without any leaking (and dishwasher safe).
6. Camping Gear: I do short solo camping trips a couple of times every year.  Although it is a bit harsher, I prefer the winter because usually I’m the only human in the woods at an otherwise popular campsite.  You don’t need much gear to get started: (1) tent; (2) sleeping bag.  One key is to have a nice thick sleeping pad.  These were developed by Therm-a-Rest, but their patents seem to have expired and so there are thousands on the market.
7. Red Light Therapy: A couple of years ago while my spouse was away at a conference, I ordered a bunch of cedar and a sauna in my house.  I have a 220v Finnish style heater, and I also have an array of red-lights for red-light therapy.  I went all-out, but it is easy to get started with simply the red-lights that have been shown to provide lots of health benefits.  My set comes from a friend of mine who runs the company Sauna Space.  His are incandescent bulbs and so also give off lots of heat.  Lots of LED versions are also available.
8. EMS: OK – The Katalyst Fit just looks super cool to me.  It uses “electro muscle stimulation” to help you lift and shock your muscles into action.
9. Sony Playstation Classic: This classic console comes pre-loaded with 20 games from the late 1990s, including Final Fantasy 7.

I left off the one thing I’ve been thinking about – a fancy espresso machine.  I am usually the first one up in my house and take a few minutes to make myself an espresso coffee. But, it is a bit of a process because I use an Italian stove-top espresso pot – a Moka Pot.  After that, I usually add some almond milk and some protein powder.  What do folks think about the small Breville machine?  OK – after watching this video on Cleaning the Breville, my process seems much simpler, faster, and cheaper.

by Dennis Crouch

SoClean v. Sunset Healthcare Solutions (Fed. Cir. 2022)

The SoClean’s eponymous product cleans CPAP machine parts. Sunset was a former distributor for SoClean, but has now become a competitor.  The SoClean device has a compact filter that should be replaced every six-months–creating a nice subscription market. Sunset sells a generic version of the same filter. Litigation ensued.

SoClean’s problem back in 2018 was how to protect these filters with intellectual property.  The company had waited too long to file for patent protection and so it turned to trademark.  The USPTO complied and issued registered two trademarks on the filter shape.  The two (shown below) are almost identical except for some dashed lines.

With the trademark registration in-hand, the district court partially granted SoClean’s motion for preliminary injunction.  However, instead of barring Sunset from selling its competing products, it prohibited Sunset marketing or advertising its filter in any bare form.  Rather, the defendant must “prominently display the Sunset brand name in a manner that leaves no reasonable confusion that what is being sold
is a Sunset brand filter.” District Court Opinion.   The case is still pending at the district court (involving other products and claims), but an order granting a preliminary injunction is automatically appealable.  And, because the complaint includes patent infringement claims, the appeal was directed to the Federal Circuit.

On appeal, the Federal Circuit affirmed, but only after reviewing some interesting arguments from Sunset.

Secondary Meaning: Trade dress is only protectable upon showing of secondary meaning.  Here, however, Federal Registration serves as prima facie evidence of validity. 15 U.S.C. § 1057(b).  Sunset pointed to mistakes made by the trademark examiner, but the appellate court found those complaints legally insufficient.  In particular, the court concluded that the statutory presumption of validity implicitly forbids simply reviewing and reconsidering the work already done by the TM examiner.

[S]crutinizing the application process and deciding whether the trademark examiner was correct to issue the registration in the first place is the opposite of presuming that the registration as issued is valid.

Slip Op.  Sunset can undermine secondary meaning, but it must do so by providing evidence rather than simply poking holes in the prosecution process.

Important note here.  I mentioned errors by the trademark examiner.  They are actually quite significant.  I read looked through the USPTO file jacket and was unable to see any evidence presented of secondary meaning except for a self-serving statement from SoClean’s VP of IP that the product was distinctive and had been used for at least five years in a manner that was “substantially exclusive and continuous.”  In general, that amount of evidence is insufficient to support a product design trade dress registration.

In order to protect trade dress, the courts apply a “vigorous evidentiary requirement” to ensure that the mark has obtained secondary meaning.  Because the burdens had shifted upon registration, the district court wrote that Sunset now had the “vigorous” requirement.  On appeal, the Federal Circuit rejected the “vigorousness” portion of the district court’s opinion, but fount that a harmless error.  Sunset’s burden is simply to provide a preponderance of the evidence showing that the mark lacks secondary meaning.  But here, presented evidence that was “equivocal, at best.”

Equivocal evidence plainly fails to satisfy a preponderance-of-the-evidence standard, so Sunset is wrong to suggest that the district court would have reached a different result had it applied the correct standard. The district court’s misstatement of the applicable standard of  roof is harmless error.

Slip Op.

Functionality: You likely considered the filter above and thought – this seems like the purview of patents rather than trademarks. Here, Sunset argues that the trade dress design “is entirely utilitarian” and therefore not protectable as trade dress.  The district court concluded that the filter head design includes “some arbitrary elements” — enough so that the presumption of validity applies here.

Irreparable Harm: The Trademark Modernization Act of 2020 states that a TM plaintiff seeking any injunction “shall be entitled to a rebuttable presumption of irreparable harm.” 15 U.S.C. § 1116.  Sunset did not attempt to rebut that presumption in this case.

Mike Brister is a theme park designer and I love his 2022 patent directed to a “vanishing illusion system.”  U.S. Patent No. 11,235,258 .

The basic idea is that a portion of the glass is reflective while other portions are transparent. But, the room on the other side is a mirror-image room–identical except that for the person trying to see himself in the mirror. A higher tech-version involves moving the mirror/transparent portions for various effects.

Patent examiner issued a first-action allowance on the following claim:

1. A system for generating a vanishing illusion, the system comprising: a first room; a second room, wherein the second room mirrors the first room; a wall separating the first room from the second room, wherein the wall comprises: a transition glass comprising a mirrored portion and a transparent portion; and a frame through which the transition glass is configured to move; and an actuator configured to move the transition glass with respect to the frame such that the mirrored portion is in alignment or out of alignment relative to the frame based on a trigger or a condition being met.

= = = =

Query: If an illusionist had used something similar to fool audiences in public performances, would it be prior art?

You can find a great post on magical patents from Leopoldo Belda Soriano on his blog: Magical Patents.

MAGICAL PATENTS (When magic is patented)

by Dennis Crouch

In the standard case, a US utility patent will expire 20 years from its effective filing date.  But, there are several circumstances that might alter the patent term. As a consequence, only a minority of patents fit the standard.  One circumstance involves unduly delayed patent prosecution that results in “patent term adjustment” or PTA under 35 U.S.C. 154(b).  The two chart below show PTA awards over the past 17 years.  Of some importance here — over the past 18 months PTA has been steadily creeping-up.  This is generally an indication that the prosecution process has slowed down.

These numbers will likely continue to rise as indicated by the USPTO’s delays in issuing an initial office action rejection — only about 30% of cases are receiving a first office action within the 14 months allotted by Congress.  I’ll note here that the PTA does not ‘cost’ the USPTO anything in terms of up-front money and, may make it more likely that the patentee will pay the issue and back-end maintenance fees.

Provisur Technologies, Inc. v. Weber, Inc., Docket No. 5:19-cv-06021 (W.D. Mo. Feb 22, 2019)

A jury has sided with Provisur and issued a $10 million verdict against its  food-processing machinery competitor Weber Maschinenbau. This is about half what Provisur requested.

The patents cover various various high-speed slicers, conveyors, and packaging equipment.  I spent a summer working on the line of a bacon packing factory and know how critical it is to have machinery that is speedy and safe, and works well even with variable inputs and poorly trained handlers.

Following a nine-day trial, an eight-member jury found claims from three of the four asserted patents infringed.  The Judge in the case is Stephen Bough, a 2014 Obama appointee.  In cases like these, Judge Bough generally seats a six-member jury with two alternates. (Under FRCP 48, the jury needs to have at least six jurors in order to render a verdict in civil cases). 

The jury also found the infringement willful. The patentee will likely use that willfulness verdict to request punitive damages.   In post-verdict motions, the defendant will likely renew its motion for Judgment as a Matter of Law. A key question is raised in the pre-verdict JMOL motion was whether the patentee is entitled to rely upon an Entire Market Value Rule to calculate damages rather than an apportionment approach.  The patentee also indicated in its pre-trial brief that it planned to also seek injunctive damages.  That equitable issue is decided by a judge rather than jury.

One interesting aspect of the verdict is that the jury was authorized to to decide the case on either literal infringement or under the doctrine of equivalents (DOE).  The verdict form did not, however, require the jury to distinguish between the two. Thus, the verdict can be upheld on either ground. I have included the jury instructions on DOE below.

The patentee was represented by Willkie Farr & Gallagher on a team led by Craig Martin.  Sterne Kessler represented the defendants.  This appears to be one of several ongoing patent battles between the two parties in US court, the PTAB, and abroad.

On July 25, 2022, W.D.Tex. Chief Judge Garcia issued a unique order regarding assignment patent cases filed in Waco Texas federal court.  Prior to that order, all Waco cases were assigned to Judge Albright.  Many accused infringers complained that Albright was taking cases to trial to quickly and after some political pressure Judge Garcia issued this new order that going forward any patent actions filed in Waco will be distributed randomly to one of twelve W.D.Tex. Judges.

Since that date, 234 patent cases have been filed in W.D.Tex.  One surprise from looking at the judicial assignments — about 1/3 of these new cases have been assigned to Judge Albright. It appears that the court may be making an exception to the rule when new cases are closely related to already pending cases, but I have not seen any public statement on that front.  Of the other 11 judges, all have received at least one new case, with most having 9-11 patent cases to handle.  The new randomness appears to also create a delay in case assignment.  About 25% of the cases have not yet been assigned to any judge — most of these are cases filed in October.

Finjan LLC v. ESET LLC, — F.4th — (Fed. Cir. 2022)

Finjan’s patents claim a system for checking downloadable files for security concerns.  Back in 1996 when Finjan filed its original provisional application, the focus was on applets or other small downloadable programs.  But downloadables today are much bulkier.  Here, the claims require a number of operations on “a downloadable” and the parties have debated throughout the litigation how to construe that term.

The district court’s approach was a bit convoluted.

• Construction: The district court first narrowly construed the term as limited only to “small downloadables.” Although the asserted patents do not appears to require smallness, the patents do incorporate-by-reference a family member that particularly defines downloadable as “applets” and as “small executable or interpretable application program[s] which [are] downloaded.”
• Invalidation: Later, the district court reviewed that construction and concluded that the term “small” is a term of degree without any limiting theory and therefor is invalid as indefinite.

(more…)

Here is a new example of a Schedule-A case filed in the Northern District of Illinois.

Dyson Tech. Ltd. v. Persons listed on Schedule A, Docket No. 1:22-cv-05946 (N.D. Ill. Oct 27, 2022).

DysonAnonComplaint.  The list of defendants is apparently in Schedule-A, but that document was filed under seal.  The complaint alleges that the defendants are all counterfeiters who operate in “foreign jurisdictions with lax intellectual property enforcement systems” such as “the People’s Republic of China.” They are selling products in the US via online stores such as eBay, AliExpress, Alibaba, Amazon, Wish.com, Walmart, Etsy, and DHgate. The justification for the under-seal filing is similar to that of sealed warrants or sealed indictment in criminal cases.  In particular, the patentee has indicated that it plans to seek a TRO in a way that will preserve evidence:

If Defendants were to learn of these proceedings prematurely, the likely result would be the destruction of relevant documentary evidence and the hiding or transferring of assets to foreign jurisdictions, which would frustrate the purpose of the underlying law and would interfere with this Court’s power to grant relief. Once the temporary restraining order has been served on the relevant parties and the requested actions are taken, Dyson will move to unseal these documents.

MotionToSeal.

Dyson’s patent here is U.S. Design Patent No. D853,642 and appears to cover its “Airwrap” product.  [$699 on Amazon]. According to RPX, the patentee here has already sued 1,000+ defendants for infringement even before this actions.

By Sarah Burstein, Professor of Law at Suffolk University Law School

• ABC Corp. I v. Partnership & Unincorporated Associations Identified on Schedule “A,” No. 21-2150 (Fed. Cir. 2022);
• ABC Corp. I v. Partnership & Unincorporated Associations Identified on Schedule “A,” No. 22-1071 (Fed. Cir. 2022)

On October 28, the Federal Circuit released two decisions stemming from a single case in the Northern District of Illinois. These appear to be the first—and certainly the first precedential—Federal Circuit cases dealing with the merits of one of the numerous “Schedule A” design patent cases that have been filed in recent years in the NDIL.

And when I say “numerous”: A search of Lexis CourtLink for NDIL cases with “Schedule A” in a party name results in a list of 2,669 cases filed since 2011.

In these cases, the plaintiffs name the defendants (and sometimes themselves) only in sealed “Schedules A.” Sometimes they don’t even file the patent number publicly. See, e.g., this case.

These plaintiffs assert that this secrecy is necessary to defeat nefarious Chinese “counterfeiters” who are monitoring U.S. PACER dockets. The use of this “counterfeiting” rhetoric is troubling in and of itself (for reasons including the ones I discussed in this previous Patently-O post) but these cases raise a number of additional concerns.

Professor Lorianne Updike Toler outlined some of these concerns in her motion to file an amicus brief in a different Schedule A case. That motion was denied because the judge (a different one from the one involved in the cases that are the focus of this post) felt that allowing Professor Toler “to present new arguments (no matter how meritorious or persuasive) on behalf of absent Defendants would thus pay insufficient heed to the principle of party presentation.”

One issue Professor Toler raised in her motion was the issue of fair notice. And, indeed, in ABC Case No. 21-2150, the Federal Circuit reversed a 2020 preliminary injunction (and a related order) because the judge issued preliminary injunctions against parties who had not yet been served with process and who were not given proper notice pursuant to Federal Rule of Procedure 65.

Since I first noticed the uptick in these cases a few years ago, I’ve had my own concerns about these cases, largely focused on the merits of these claims. These complaints often don’t include pictures of the infringing products in their publicly-filed pleadings, so an outside observer has no way to tell whether the claims have merit or not.

The Federal Circuit’s decision in ABC Case No. 22-1071 does nothing to assuage these concerns. In that decision, the Federal Circuit reversed a 2021 preliminary injunction in the same case, finding the court improperly analyzed the issue of design patent infringement.

It is clear, from reading the decision, that the design patent infringement claims lacked merit. The plaintiff’s infringement expert (and one might seriously question whether a designer’s option satisfies the requirements of Federal Rule of Evidence 702 when the standard for infringement relies on the perspective of the hypothetical ordinary observer, not on the perspective of a designer of ordinary skill) seemed to be a victim of what I’ve referred to as “the concept fallacy” in design patent litigation—i.e., the erroneous view that design patent protect design concepts, as opposed to the actual shapes or surface designs claimed.

Specifically, the plaintiff’s expert appeared to believe that the patents-in-suit covered the concept of a hoverboard with an “hourglass shape.” They do not.

Additionally, the expert appears to have relied on a theory—never adopted by, and in fact, specifically rejected by the Federal Circuit—that posits that a design patent may be entitled to a broader scope if it is “far from” the prior art. That’s not how design patent infringement works. As I explained here: “The use of the prior art in the design patent infringement analysis is a one-way ratchet—it can be used to narrow the presumptive scope of a claim but cannot be used to broaden it.” (For more on how the test for design patent infringement actually does work, see this short essay.)

These are serious problems, especially to the extent that the district court thought that “[r]esolving this expert dispute will likely require a trial.”

*           *           *

The panel’s discussion of the infringement standard on the merits also merits further discussion. In its decision on the 2021 injunction, the Federal Circuit correctly notes that the district court erred in concluding that a putative “clash of experts” meant that the plaintiffs had discharged their burden to show a likelihood of success on the merits. And the panel was correct that, overall, the plaintiffs failed to prove they were likely to succeed on the merits

But other parts of the Federal Circuit panel’s analysis are problematic.

For example, in a footnote, the panel suggests that “substantial similarity” means the same thing in design patent that it does in copyright. The panel suggests that the duplication of a “dominant feature” of a design patent might sometimes be sufficient to constitute design patent infringement:

In other words, where a dominant feature of the patented design and the accused products—here the hourglass shape—appears in the prior art, the focus of the infringement substantial similarity analysis in most cases will be on other features of the design. The shared dominant feature from the prior art will be no more than a background feature of the design, necessary for a finding of substantial similarity but insufficient by itself to support a finding of substantial similarity.

Op. at 13-14. This suggestion misapprehends the standard set forth by the en banc Federal Circuit in Egyptian Goddess.

As the en banc court made clear in Egyptian Goddess, design patent infringement requires evaluation of the design as a whole. That is very different from the way that copyright infringement is evaluated today.

In Egyptian Goddess, the en banc Federal Circuit was very clear: The prior art can be used to only to narrow the presumptive scope of the design. That is because “where there are many examples of similar prior art designs, as in a case such as Whitman Saddle, differences between the claimed and accused designs that might not be noticeable in the abstract can become significant to the hypothetical ordinary observer who is conversant with the prior art.” It is not, as the panel suggests here, due to some kind of “dominant feature” dissection analysis.

But in this case, we shouldn’t even have to get to the prior art step. The accused product shown in this decision is “plainly dissimilar” from the claimed design:

As can be seen from these images (included in the panel decision), there are numerous differences—none of them immaterial—between the shape of the claimed designs and the accused products. These are plainly dissimilar designs. The analysis should have ended at Egyptian Goddess step 1 with a finding of noninfringement.

So the result here (no injunction) is plainly correct. But the panel’s analysis muddies the Egyptian Goddess waters in unhelpful—and utterly unnecessary—ways.