by Dennis Crouch

In a recent filing, Brooklyn Brewery (Brewery) indicated plans to take its trademark opposition/cancellation case to the US Supreme Court.  The key constitutional question involves when a TM challenger has Article III standing to appeal an adverse TTAB decision. The issues are parallel to those faced on the patent side by unsuccessful Inter Partes Review (IPR) petitioners who attempt to appeal that loss.

There is a lot going on in Brewery v. Brew Shop, but the question before the Supreme Court focuses on Brewery’s opposition to Brew Shop’s multi-class trademark registration application.  The application covers beer & beer-making-kits (both in Class 32) and also sanitizing products (Class 5).  Brewery challenged registration in both classes (and lost).  On appeal, the Federal Circuit divided up its opinion between the three types of goods.  It ruled on the merits for the beer and beer-making-kits. Brooklyn Brewery Corp. v. Brooklyn Brew Shop, 17 F.4th 129 (Fed. Cir. 2021). But, refused to hear the portion of the appeal relating to the sanitizing products.

Lack of Standing: With respect to use of the mark on sanitizing products, the appellate court dismissed Brewery’s appeal because the company did not show any concrete injury since Brewery does not compete in the sanitizing product market. “To be clear, an opposer cannot show standing by merely showing the registrant competes with the opposer and receives a benefit from an unlawful trademark.” The parties also do not compete in the beer-making-kit market. However, the court found standing there since “beer-making kits are related to beer and to some extent compete with beer since they are sold in many of the same stores.” And,  according to the court folks who brew beer also drink beer.  (Note that in this video, one of the BBS founders says that she didn’t like beer). It is important to note that the court’s holding here is on Constitutional grounds. The U.S. Constitution prevents the appellate court from hearing an appeal on this particular aspect of the case.

Brewery has not yet filed its petition for writ of certiorari, but it did recently petition the Surpeme Court for an extension of time and that document included the following:

This case presents a substantial and important question of federal law: what must a party show to have Article III standing to appeal an adverse judgment from the Trademark Trial and Appeal Board to the United States Court of Appeals for the Federal Circuit? Below, the Federal Circuit for the first time held that such appellants must show that (1) it competes in the same line of business as the appellee, and (2) failure to cancel or refuse registration of a mark would likely cause the appellant competitive injury. The Federal Circuit’s unprecedented decision contravenes this Court’s decisions, including Lexmark Int’l, Inc. v. Static Components, Inc., 572 U.S. 118 (2014), and, for many litigants, forecloses appellate review of adverse TTAB decisions.

[Petition]

This result is what my old Brooklyn butcher might have termed “slicing the bologna a bit too thin.”  In my view, if a party has Constitutional standing to challenge one aspect of a trademark registration, the Constitution should permit a challenge of all aspects of that application.  You could think of this like having standing to challenge claim 1 of the patent, but not claims 2-4.  That result can happen, but ordinarily requires an affirmative act by the patentee to show that there is no way that any liability would ever flow from those extra claims.

Facts: This was not raised by Brewery’s attorneys, but I’ll also note that my 2 minute internet search revealed the Brooklyn Brewery napkin below–showing that in-fact the company may compete in the sanitizing product marketplace.

In its opposition, the Brewery had argued that Brew Shop’s mark – as used on sanitation products – lacked acquired distinctiveness.  However, the Board did not actually render a decision on that issue.  In some of its briefing, Brewery argues that this situation calls for an automatic remand under the “ordinary remand rule;” and that such a remand does not require the full standing analysis. Brewery En Banc Petition.

= = =

As mentioned, the trademark oppositions and cancellation proceedings have a number of parallels to IPR challengers, including the issue of appellate standing for unsuccessful petitioners.  A patent case on the point is pending before the Supreme Court, and we are awaiting the views of the Solicitor General. Apple Inc. v. Qualcomm Incorporated, No. 21-746 (CVSG requested February 22, 2022).

One difference between the Trademark and Patent cases is that the TM opposition statute limits the availability of oppositions to folks who “who believe[] that [they] would be damaged by the registration of a mark upon the principal register” 15 U.S.C. § 1063(a).  What that means is that we already have a decision by the TTAB that Brewery had standing to make these challenges.  The Federal Circuit did not appear to provide any deference to the TTAB’s factual conclusions regarding that issue.  In addition, the court took the unusual stance of avoiding the question of statutory standing in favor of deciding Constitutional standing in violation of the common principle of Constitutional avoidance.

Trademark Registration No. 4,034,439; U.S. Trademark Application Serial No. 86,280,776; Brooklyn Brewery Corp. v. Brooklyn Brew Shop, 17 F.4th 129 (Fed. Cir. 2021).

Kathi Vidal is now the USPTO Director after being sworn-in by Federal Circuit Chief Judge Kimberly Moore.  Congratulations!

Dir. Vidal’s first press release is a call for dialogue on what needs to happen to advance the patent office and “to expand, protect, and commercialize U.S. innovation.”  In addition to IP expansionist statements, the announcement also repeatedly adds caveats: “minimizing inappropriate opportunistic behavior … deterring abuses and gamesmanship.”  The other key theme taking steps to ensure that the innovation incentive reaches broadly to all Americans “especially those who have historically lacked access to, and opportunities for equitable participation in, our intellectual property (IP) economy . . . from every region of the Country and across gender, race, identity, socioeconomic class, and veteran status, as well as among all other groups that have been underserved and overlooked.”  This is exactly right – for our world to remain viable, we need to allow space for each person’s individual genius.   Vidal proposes reaching out to actually teach innovation “in our schools, universities, and communities and encourage the emergence of additional innovation hubs.”

Read more here.

by Dennis Crouch

Although Nautilus made it easier for a court to find claim terms indefinite, the Federal Circuit continues indicate that the definiteness test strongly favors validity.

In Niazi Licensing Corp. v. St. Jude Medical S.C., Inc. (Fed. Cir. 2022), the court has sided with the patentee–rejecting the district court’s indefiniteness finding.

Niazi’s US6638268 covers a double lined catheter designed for placing an electrical lead in the coronary sinus vein. The outer catheter is a “resilient catheter having shape memory and a hook shaped distal end.”  The inner catheter is a “pliable catheter.”  In Figure 8 below, you can see that the larger outer catheter can get most of the way to the vein destination, but its less-pliable construction makes it difficult to follow all the twists.  The pliable inner catheter is then inserted and extended to reach the vein location.

D.Minn. Judge Wright found the terms “resilient” and “pliable” indefinite and therefore that the claims were invalid. On appeal, the Federal Circuit has reversed–holding that terms meet the requirement of “reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014).

Patent law’s definiteness requirement is derived from the requirement that patent claims “particularly pointing out and distinctly claiming the subject matter” of the invention.  35 U.S.C. 112.  The purpose of express claims is to provide public notice of the scope of exclusive rights so that competitors and potential copycats can arrange their affairs to avoid infringement.  (We could pause here to question whether competitors and potential copycats do this in the ordinary course or if it is instead merely legal fiction.)  But, the Supreme Court has also recognized that claims need not perfectly delineate claim scope — rather, the claims must provide “reasonable certainty” as to their scope. Nautilus.  In particular, the Federal Circuit has repeatedly found terms of relative degree to be definite so long as POSITA would have “enough certainty.”  Further, “a claim is not indefinite just because it is broad.” Slip Op.  On the other hand, “purely subjective” claim terms are indefinite — such as “aesthetically pleasing” as used in Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1345, 1349–56 (Fed. Cir. 2005) (there must be some “objective anchor”).

Here, according to the court, Niazi’s claims terms provide enough guidance to avoid being labelled indefinite.

• Resilient: The claims require “an outer, resilient catheter having shape memory.”  In its decision, the court concluded that resilient is guided by the “shape memory” requirement.  The specification further explains that it may have a “braided design.” and may be made of “silastic or similar material” with the purpose of “return[ing] to its original shape” after being distorted.  The specification also categories resilience in terms of both torque control and stiffness.
• Pliable: The claims require “an inner, pliable catheter slidably disposed in the outer catheter.”  The specification provides further explanation: “constructed
  of a more pliable, soft material such as silicone;” and without “longitudinal braiding, which makes it extremely flexible and able to conform to various shapes.”

In addition to each having some amount of support from the specification, the court also noted that the two terms can be read relative to one another– the pliable inner catheter must be “more flexible than the outer.”

Definiteness is ordinarily a question of law and so the Federal Circuit reviews the issue de novo on appeal. Here, the court found sufficient reasons to find the terms definite. Reversed.

Note: The court also considered dictionary definitions.  It did not discuss whether those definitions introduced extrinsic evidence requiring deference rather than de novo review.

= = = =

Niazi’s Claim 11 is a method-of-use claim that did not use the pliable/resilient terms.   Thus, it survived the district court indefiniteness attack.  The defendant here St. Jude supplied the accused catheter, and Niazi argued that St. Jude had induced doctors and hospitals to infringe.  The district court found no inducement.  On appeal, the Federal Circuit affirmed — holding that under the correct construction of the claim terms there was no underlying direct infringement.

= = = =

Exclusion as a Discovery Sanction: In his expert report, Dr. Niazi’s technical expert (Dr. Burke) stated that he had personally infringed the Niazi patent while using the accused products.  The problem: Dr. Burke had not been identified as a fact witness as required by R.26(a)/(e).  Dr. Niazi’s damages expert relied upon several license agreements to support his report. However, those agreements were not identified during fact discovery despite a specific request for documents.  Both expert reports were provided after the close of fact discovery (as is common).  As a sanction for the late disclosures, the District Court struck those facts from the expert reports and barred Dr. Burke from testifying as a factual witness.   On appeal, the Federal Circuit affirmed on a technical ground — finding that Niazi’s appeal on this question failed because he did not challenge the actual basis for the district court’s decision–whether the delay in disclosure was “substantially justified or harmless.”

Despite the exclusion order, Niazi still presented a declaration from Dr. Burke in support of summary judgment that included a number of factual claims based upon Burke’s personal experience.  The district court struck the statements and also awarded monetary sanctions under R. 37.  The Federal Circuit affirmed:

Here, the sanctions the court imposed were specifically keyed to St. Jude’s expenses in moving to strike the already-excluded evidence from consideration at summary judgment. We see no abuse of discretion in the district court’s decision to award monetary sanctions.

Slip Op.

= = = =

Finally, the district court also excluded Niazi’s damage expert report as unreliable.

The district court excluded Mr. Carlson’s expert opinion as legally insufficient because Mr. Carlson failed to “apportion” between infringing and noninfringing uses and because he could not properly include leads in the royalty base. We affirm the district court’s exclusion.

Slip Op.   Here, the idea was that St.Jude agued that some uses were non-infringing and the expert did not attempt to apportion-out the non-infringing uses but instead merely stated that apportionment would be “impractical in view of real-world considerations.”

Here, the claim was that sales by St. Jude (along with its instructions) were inducing infringement the method-of-use claims.  The patentee argued that apportionment does not apply to method claims.   But, the Federal Circuit disagreed with that broad statement. “Damages should be apportioned to separate out noninfringing uses, and patentees cannot recover damages based on sales of products with the mere capability to practice the claimed method. Rather, where the only asserted claim is a method claim, the damages base should be limited to products that were actually used to perform the claimed method.”

by Dennis Crouch

Courts continue to struggle with their use of evidence for claim construction.  The recent case of Genuine Enabling Tech. LLC v. Nintendo Co., Ltd., 2022 WL 982246, — F.4th — (Fed. Cir. Apr. 1, 2022), shows us subtle dividing lines between applicant statements (1) that create a disclaimer compared with those (2) that are merely helpful for interpretation.  The decision offers solace to careful patent prosecutors that the courts should not unduly extrapolate upon arguments distinguishing the prior art.

The normal rule of claim construction is that claim terms should be given “the meaning that the term[s] would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application.” Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)(en banc).  That rule is tempered by the requirement that courts consider the specification and prosecution history as relevant to shape our understanding.  At times a patentee will particularly define a claim term–and that definition will control its scope. Similarly, a patentee may disclaim or disavow claim scope. Disavowal generally requires  a clear statement that shows “unmistakable [and] unambiguous evidence of disclaimer.”  Omega Eng’g, Inc, v. Raytek Corp., 334 F.3d 1314, 1332 (Fed. Cir. 2003).  In litigated cases, the prosecution history rarely includes an express statement of disclaimer–“I hereby disclaim ….”–forcing courts to draw the lines in a murky field.

I see disclaimer as an examination failure.  When a patentee distinguishes the prior art based upon non-apparent limitations, the examiner should require the patentee to amend the claims by adding limitations rather than permitting the patentee to re-define claim terms on the fly.  If the specification would not support such an amendment, then the specification also would not support the disclaimer.  In Genuine Enabling Tech., the examiner accepted a distinguishing argument and issued the patent — leading to the case at hand.

Background on GET: Nguyen’s U.S. Patent No. 6,219,730 stems from his invention of a “voice mouse.”  The apparatus works like a regular computer mouse but also allows for sound input/output through the mouse.  The sound signal is then combined and synchronized with the mouse movement signal to be sent to and from the computer.   In the drawings sheet below, you can compare the prior art (Fig. 1A – sound connected to PC via sound-card) to Nguyen’s invention (Fig. 1B – sound connected through the mouse).

Although I described the two inputs as a mouse-movement signal and a sound signal, the patent claims actually use much broader terms: a “user input stream” (i.e., the mouse movement) and an “input signal”  (i.e., the audio signal). These two signals are encoded into a “combined data stream” for transfer across a communication means.  In its lawsuit against Nintendo, the patentee argues that Wii and Switch controllers embody the invention. In particular, the “user input stream” is “generated by the user pushing buttons” and the “input signal” comes from the accelerometer.  At the district court, Nintendo successfully argued that “input signal” should be narrowly construed to exclude the accelerometer.  In particular, the district court found that  the patentee’s prosecution disclaimer required the narrow construction.

1. A user input apparatus … comprising:

user input means for producing a user input  stream;

input means for producing [an] input signal;

converting means for receiving [the] input signal and producing therefrom an input stream; and

encoding means for synchronizing the user input stream with the input stream and encoding the same into a combined data stream transferable by the communication means.

US6219730, claim 1.

Input Signal. When interpreting the term “input signal,” the district court looked to the specification and also the prosecution history to limit “input signal” to signals at >500 Hz, and “excluding positional change, physiological response, or other “slow-varying information.”  Nintendo argued that this construction offered two reasons for non infringement, one of which was accepted by the district court.

• Argument 1: Controller accelerometers signaled positional change and therefore cannot create the claimed ‘input signal.’ The district court rejected this argument–concluding that accelerometers measure acceleration, not position.
• Argument 2: Controller accelerometers send signals at <500 Hz and therefore cannot create the claimed ‘input signal.’ The district court agreed with this argument and thus dismissed the case on summary judgment for lack of infringement.

On appeal, the Federal Circuit has rejected that construction as unduly limiting.

During prosecution, the examiner rejected the claims as obvious based upon a prior patent (Yollin).  Yollin disclosed a mouse/joystick that combined the mouse movement signal with a button-pushing signal as well as signals from potential biometric sensors (muscle tension, heart activity, brain activity, blood pressure, etc.).   Those all look like “input signals”–but the patentee argued  in its OA response that the “slow varying” signals were fundamentally different from the sound-related input signal he was claiming.  Rather, his claimed “input signal” was directed to “signals containing audio or higher frequencies.” He also showed that the Yollin approach would not work for high frequency signals because it did not account for signal collision.  The examiner accepted the distinguishing argument and allowed the case.

At the Markman hearing during litigation, Nintendo’s expert conducted an analysis of the ‘slow varying’ signals found in Yollin and concluded that they could operate at a range of up to 500 Hz.  The district court concluded that by arguing around Yollin, the patentee had effectively disclaimed all input frequencies below 500 Hz.

On appeal, the patentee admitted that its prosecution statements did create a disclaimer, but argued that the district court overreached. For its part, the Federal Circuit first noted that the expert testimony was not necessary and unduly stole attention from the intrinsic evidence.

Regarding the 500 Hz threshold, the district court erred by relying on expert testimony to limit the claim scope in a manner not contemplated by the intrinsic record. . . [T]he 500 Hz frequency threshold has no basis anywhere in the intrinsic record.

Slip  Op. Disclaimer must be clear, and so we look to the words of the applicant. The applicant here particularly stated that its claimed “input signal” was directed to “signals containing audio or higher frequencies.”  That is the disclaimer, nothing more.  “We conclude that the only disavowal of claim scope that is clear and unmistakable in the record before us is Mr. Nguyen’s disavowal of signals below the audio frequency spectrum.” Slip Op.

On remand the parties will take the next step of arguing about (1) what is the low point for the audio frequency and (2) whether the Nintendo controller signals operate above that frequency.  In its decision, the Federal Circuit appears to have fully construed the claim term: “We therefore conclude that the proper construction of ‘input signal’ is ‘a signal having an audio or higher frequency.'” Slip Op. That suggests to me that these arguments on remand will be part of the infringement case and thus factual questions for a jury to decide.  [Note here that Nintendo will also likely argue invalidity based upon the expanded claim scope].

= = = =

Note – the court’s rejection of expert testimony here contrasts with its demand for expert testimony in the Williamson v. Citrix line of cases where the court is asking whether a particular claim term inherently includes sufficient structure.

MBHB LLP is the exclusive sponsor for Patently-O.  I joined the firm as a law clerk back in 2001 and got my first assignments from Larry Aaronson.  I still cringe thinking about the amount of red-ink he spilled editing that first office action response.

Congratulations to our newest member of the United States Supreme Court, Justice Ketanji Brown Jackson, confirmed today by by the US Senate.  Justice Brown Jackson will take office once Justice Breyer retires in June 2022.  She does not have substantial patent law experience, but does have extensive experience handling administrative law cases based upon her time as a Federal District Court Judge and Appellate Judge, both in the District of Columbia.

Longtime Commissioner of Patents Drew Hirshfeld announced today that he plans to leave the USPTO this summer.  Until that point, he will likely serve as Acting Deputy Director to help Kathi Vidal hit the ground running as she begins her tenure as USPTO Director.  Hirshfeld writes:

Kathi Vidal … is, without a doubt, the right person to lead the USPTO. Not only is she highly qualified, but she has also repeatedly shown me and so many others how thoughtful and steadfast she is in her determination to do the right things for this agency and our nation’s inventors and entrepreneurs. She will be a great leader. . . . I cannot think of a better way to conclude my time at the agency than by helping Kathi in any way I can before a permanent deputy director arrives.

In this structure, Andy Faile will stay on as acting Commissioner for Patents until a new Commissioner is appointed by the Secretary of Commerce. 35 U.S.C. 3 (“The Secretary of Commerce shall appoint a Commissioner for Patents . . . for a term of 5 years.”).  Dave Berdan has been serving in the role of deputy director under Hirshfeld.  Berdan will likely return to his role as General Counsel — pushing Will Covey back to his permanent role of Deputy General Counsel and Director for the Office of Enrollment and Discipline (OED).

by Dennis Crouch

Littelfuse, Inc. v. Mersen USA EP Corp., 2022 WL 995611, — 4th — (Fed. Cir. Apr. 4, 2022)

The district court narrowly construed Littelfuse’s U.S. Patent No. 9,564,281–leading to an admission of non-infringement.  On appeal, the Federal Circuit has vacated and remanded–finding that the proper construction provides a broader scope.

The patent claims an end-cap for a fuse and particularly requires “a fastening stem [465] that extends from the mounting cuff [460] and into [a] cavity [410] of the terminal [432].”  Claim 1 does not expressly indicate whether these parts (cuff / stem / terminal) are made from a single piece of metal (unitary) or instead are multi-piece.  Claims 8 & 9, do provide for unitary bodies that are machined/stamped “from a single, contiguous piece of conductive material.”

The district court construed claim 1 as covering only a multi-piece apparatus.  Since Mersen’s fuses were clearly unitary, Littelfuse conceded the absence of literal infringement.  In addition, Littelfuse had narrowed this portion of the claim during prosecution — that amendment also likely foreclosed a claim of equivalents.

On appeal, the Federal Circuit rejected this narrow claim construction on the following canons:

1. Textualism: Look first to the language of the claim at issue. Here, claim 1 does not require  a multi-piece arrangement.
2. Claim Differentiation: Interpret an independent and dependent claims so that their coverage fits like nested dolls.  Here, the district court interpreted claim 1 as excluding a unitary-body while dependent claims 8&9 require a unitary body.
3. Consider the Prosecution History: Here, the examiner wrote in their reasons for allowance that claims 8 & 9 “require all the limitations of [claim 1].”  This gives weight to the Claim Differentiation canon.
4. Don’t Limit Claims to the Preferred Embodiment: Here, the only embodiment that included the stem/cuff/terminal arrangement was a multi-piece apparatus. But, “Nothing in the specification states that a fastening stem cannot be present in a single-piece apparatus. . . . One can envision a stem that projects from the side of the mounting cuff even in an embodiment in which the fuse end cap is formed from a single piece of material.”

These canons together led the Federal Circuit to reject the district court’s claim construction.

Not such an easy case: So far, I’ve suggested that this was an easy case. But, the district court also had good reason for its determination that the end-cap was a multi-part.  In particular, embodiments of the specification appear to provide for two types of end-units.  Unitary and multi-part. The unitary embodiments do not have the fastening stem — it is not needed because the cuff and terminal are made of the same piece of metal.  On the other hand, the multi-part embodiments do show the fastening stem — it is needed in order to connect the cuff and terminal because they are separate pieces of metal.  You can see this difference from the multi-part drawing (above) with the unitary drawing (below).  The original claims did not include the fastening stem, but that limitation was added during prosecution in order to avoid prior art.  That addition, according to the district court, shifted the claim meaning to only cover multi-part caps. The district court noted the dependent claims but suggested that it was a mistake by the examiner to allow those after the amendment.

On remand: The patent discloses a multi-part cap with a stem; and a unitary cap without a stem.  The accused product is apparently a merger of these two – a unitary cap with a stem. The Federal Circuit has ruled here that the claims extend that far.  On remand, the district court may consider whether the full extent of this expanded claim scope is supported under the written description and enablement requirements of 112(a).

by Dennis Crouch

In an important 2018 decision, the Federal Circuit sided partially with Berkheimer on a procedural eligibility grounds — finding disputed questions of material fact as to whether aspects of the claimed invention were “well-understood, routine, and conventional to a skilled artisan.” Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), cert denied 140 S.Ct. 911 (2020).  The district court had invalidated claims 1-9 as ineligible and 10-19 as indefinite. The appellate panel vacated that decision as to claims 4-7 but otherwise affirmed.

Back on remand, the district court Judge John Lee has now ruled that the remaining claims are also indefinite under section 112p2. Steven E. Berkheimer, Pl.  v. HP, Inc., 12-cv-9023, 2022 WL 910580 (N.D. Ill. Mar. 29, 2022).  [Berkheimer_v._Hewlett-Packard__314]

The invention is a method of parsing computer files into “multi-part object structures” with “searchable information tags.” The system then uses “manual reconciliation” that involves looking for a measure of variance. The basic idea is that this system provides a searchable archive with reduced redundancy.  Claims 10-19 require “minimal redundancy.”  That term was not defined in the specification, and the district court found it indefinite.  Berkheimer v. Hewlett-Packard Co., 2015 WL 4999954 (N.D. Ill. Aug. 21, 2015).  The Federal Circuit then affirmed that decision.

The specification uses inconsistent terminology to describe the level of redundancy that the system achieves. For example, it describes “minimiz[ing] redundant objects,” “eliminating redundancy,” and “reducing redundancies.” The only example included in the specification is an archive that exhibits no redundancy. … The specification contains no point of comparison for skilled artisans to determine an objective boundary of “minimal” when the archive includes some redundancies.

The prosecution history does not add clarity. In response to an indefiniteness rejection during prosecution, Mr. Berkheimer explained that the claim “desires to eliminate redundancy” but includes the word “minimal” because “to eliminate all redundancy in the field of the claimed invention is not likely.” This does not explain how much redundancy is permitted.

Berkheimer (Fed. Cir. 2018).  The remaining claims 4-7 do not use the term “minimal redundancy”, but instead require an archive “without substantial redundancy.”  On remand, the district court found that term equally problematic and ultimately concluded that it failed delineate “the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014).

Without Substantial Redundancy: The district court identified the “substantial” wiggle-word as “facially ambiguous”–but concluded that ambiguity could be permissible someone of skill in the art had sufficient guideposts.  Typically, those guides might come from examples within the specification.  Here, however, the patent specification only includes an example of no-redundancy.  And, during prosecution it appears that the examiner and Berkheimer treated “without substantial redundancy” and “minimal redundancy” as synonyms.  Thus, the district court found that “substantial redundancy” lacked reasonable certainty for the same reasons as “minimal redundancy.”

Although Berkheimer could have also presented extrinsic evidence regarding the meaning of ‘substantial’ the court indicated that he did not do so.

“Judgment is entered in HP’s favor, and this case is terminated.”

= = = =

The district court invalidated the “minimal redundancy” claims as part of its 2015 claim construction order.  At that time, neither party suggested that “without substantial redundancy” needed construction or was invalid.   It was only on remand that HP raised the new argument.  Berkheimer unsuccessfully argued waiver. The district court noted that its scheduling order did not preclude late-stage indefiniteness arguments.

Oddly, the district court went on to conclude that “the construction of ‘without substantial redundancy’ only became relevant after the Federal Circuit held that the synonymous term ‘minimal redundancy’ was invalid.”  This statement is wrong.  The issue was already relevant well before; and the Federal Circuit affirmed a prior invalidity finding.  What is true: back in 2015, the parties were limited to only 10 claim construction issues and ‘without substantial redundancy’ didn’t make the top-ten list.  The Federal Circuit decision pushed it up in the ranking.

= = = =

One result here is that Berkheimer will never get the chance to present the eligibility issues to the jury for their factual findings.

by Dennis Crouch

Andy Warhol Foundation v. Goldsmith (Supreme Court 2022)

Although Warhol is dead, his art, legacy, copyrights, and potential copy-wrongs live on.  In the 1980s, Warhol created a set of silkscreens of the musician Prince.  Prince did not personally model for the prints.  Rather, Warhol worked from a set of studio photographs by Lynn Goldsmith. Apparently Vanity Fair commissioned Warhol to make an illustration for its 1984 article on Prince.  As part of that process, VF obtained a license from Goldsmith, but only for the limited use “as an artist’s reference in connection with an article to be published in Vanity Fair Magazine.” The published article acknowledges Goldsmith. As part of that process, Warhol created a set of 16 Prince prints. Those have been sold and also reproduced in various forms in ways that go well beyond the original license.

Litigation ensued, and the basic question in the case is whether Warhol’s unlicensed uses constitute “fair use” under Section 107 of the Copyright Act. 17 U.S.C. § 107.  Here, in particular, Warhol argues that his use is so “transformative” of the original photographs that no license is needed.  The 2nd Circuit sided with the photographer Goldsmith — finding “the Prince Series works are substantially similar to the Goldsmith Photograph as a matter of law” and that “all four [fair use] factors favor Goldsmith.”   Although art critics and art historians will certainly see the works as quite different (especially if they know Warhol was the artist), the Second Circuit concluded copyright law does not ask Federal Judges to serve in that role:

[T]ransformative[ness] cannot turn merely on the stated or perceived intent of the artist or the meaning or impression that a critic – or for that
matter, a judge – draws from the work. . . . In conducting this inquiry … the district judge should not assume the role of art critic and seek to ascertain the intent behind or meaning of the works at issue. That is so both because judges are typically unsuited to make aesthetic judgments and because such perceptions are inherently subjective.

Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, 11 F.4th 26 (2d Cir. 2021).

The Supreme Court has now granted Warhol’s petition for writ of certiorari focusing  primarily on the transformative messaging provided by his works.  The petition argues that the Second Circuit unduly limited its analysis in ways contrary to prior Supreme Court precedent.

Question Presented: Whether a work of art is “transformative” when it conveys a different meaning or message from its source material (as this Court, the Ninth Circuit, and other courts of appeals have held), or whether a court
is forbidden from considering the meaning of the accused work where it “recognizably deriv[es] from” its source material (as the Second Circuit has held).

Warhol petition.  In its opposition briefing, Goldsmith reframed the question, focusing on the fact that the creation reproduced major elements of the photographs for the purpose of being published in the same magazine where Goldsmith’s own photographs have been repeatedly published.

Andy Warhol produced a series of silkscreens by reproducing respondent Lynn Goldsmith’s photographic portrait of the musician Prince and adding additional elements. Petitioner Andy Warhol Foundation then licensed those works to Vanity Fair, a magazine that has also featured Goldsmith’s portraits of musicians and celebrities.

The question presented is whether the Second Circuit correctly held that Warhol’s silkscreens of Prince did not constitute a transformative use, where Warhol’s silkscreens shared the same purpose as Goldsmith’s copyrighted photograph and retained essential artistic elements of Goldsmith’s photograph.

Goldsmith Brief in Opposition.

Parties (and amici) will file their merits briefs over the summer and we can expect oral arguments in the Fall.

[Updated 4/2/2022 to account for differences between refusals under Section 2(a) vs 2(e)(1)]. 

In re Dolce Vita Footwear (Fed. Cir. 2022)

This is a pending trademark case involving the mark CLEAR that Dolce Vita uses on their shoes. I remember the 1980s and gel-sandals; my internet search also reveals some beautiful translucent Crocs. Still, when I saw the brand name CLEAR as applied to footwear, I did not expect for the shoes to be transparent.  

The USPTO did expect the CLEAR shoes to be transparent and so refused to register the trademark because it was deceptively misdescriptive.  Note here that the applicant was seeking to register the mark for both Footwear and Bags/Cases.

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it … (e) Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them . . .

Section 2(e) (15 U.S.C. 1052(e)).

The Federal Circuit provides a three-part test for deceptive misdescriptiveness:

(1) Is the term misdescriptive of the character, quality, function, composition or use of the goods?

(2) If so, are prospective purchasers likely to believe that the misdescription actually describes the goods?

(3) If so, is the misdescription likely to affect the decision to purchase?

In re Budge Mfg. Co., Inc., 857 F.2d 773 (Fed. Cir. 1988).  In Budge, the Federal Circuit found substantial evidence to support the conclusion that “LOVEE LAMB” seat covers were deceptive in their misdescription because they were made of synthetic fibers rather than sheepskin.  Note here that Budge was decided under 2(a), which bars “deceptive” marks generally.  In Dolce Vita, the TTAB cited Budge, but cut the test down to just the first two parts. The TTAB did not explain its justification for this difference, but it comes down to how the USPTO has a different treatment for deception under 2(a) compared with 2(e).

In prior cases, the TTAB had explained that

The test for deceptive misdescriptiveness [under 2(e)] has two parts. First we must determine if the matter sought to be registered misdescribes the goods. If so, then we must ask if it is also deceptive, that is, if anyone is likely to believe the misrepresentation.

In re Quady Winery Inc., 221 USPQ 1213 (TTAB 1984).  The third question in the Budge test is “used to distinguish between marks that are deceptive under … Section 2(a) and marks that are deceptively misdescriptive under Section 2(e)(1).”  See In re Perfect Fit Industries, Inc., 223 USPQ 92 (TTAB 1984). TMPE 1203.02(c).  The distinction between 2(a) deceptive marks and 2(e) deceptively misdescriptive marks is important.  The TTAB has interpreted the trademark laws as creating an absolute bar to registering deceptive matter under 2(a), but deceptively misdescriptive marks are registrable in the principle register upon a showing of acquired distinctiveness, as permitted under 2(f).  (Thanks to Professor Tyler Ochoa for suggesting further clarification here).

In any event, the TTAB concluded “we have no doubt that consumers will immediately perceive the word ‘clear’ as describing a feature or attribute that Applicant’s footwear and clothing could plausibly have.”

Now, Dolce Vita has appealed to the Federal Circuit arguing that its recitation of its products as “non-transparent goods” sidesteps the misdescription issue.  “There is no evidence that consumers understand CLEAR to be misdescriptive in these circumstances, as non-transparent goods cannot plausibly be transparent.”   This argument appears to fall within the English saying of “too clever by half.”

Dolce Vita also pointed to a lack of evidence that “reasonably prudent purchasers” are likely to fooled by the misdescription.  Prudent buyers looks at the shoes (or image of the shoes) before purchasing–“the quintessential consumer goods that buyers will invariably visually inspect (and often try on) before purchase.”  Thus, even if there is some potential for initial confusion, nobody would be fooled for long. Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 1361 (Fed. Cir. 2001) (focus on whether misdescription “materially induce[s] a purchaser’s decision to buy”), quoting 2 McCarthy on Trademarks § 11:56 (2000).

• DolceVitaBrief
• TTAB Decision

The First Amendment has been doing some work in trademark law — but the bar on “deceptively misdescriptive” marks will likely stand, at least under Central Hudson’s test focusing on “nonmisleading commercial speech.” C. Hudson Gas & Elec. Corp. v. Pub. Serv. Commn. of New York, 447 U.S. 557, 563 (1980) (“The government may ban forms of communication more likely to deceive the public than to inform it.”).

Shoe brand is "CLEAR." But, it turns out that the shoes are not actually transparent.

— Dennis Crouch (@patentlyo) April 1, 2022