2019

Thinking of Joining Academia: Mizzou Entrepreneurship Legal Clinic (ELC) Needs a Director

Patent

We’re looking to hire a new director for our Entrepreneurship Legal Clinic (ELC) fairly quickly here at the University of Missouri School of Law.  The clinic is transactional (no litigation) and works with start-up companies and small businesses.

I don’t have a salary range, but it will almost definitely be a pay-cut for anyone coming out of private practice.  Hey, my salary as a law professor is still lower than my starting salary at MBHB as a first-year associate in 2003 (and I don’t get a bonus from my state-funded institution).

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The Entrepreneurship Legal Clinic (ELC) at the University of Missouri School of Law, part of the Center for Intellectual Property and Entrepreneurship (CIPE), provides free transactional legal services to creators, entrepreneurs, innovators, and inventors. The School of Law is seeking a dynamic new director to expand the ELC’s outreach to business clients in the campus, municipal, and regional communities.  The ELC director will directly supervise students participating in the transactional legal clinic, build partnerships with legal and related services firms committed to supporting start-ups positively impacting the university and community, and participate in the CIPE, Law School, and university communities.  The ELC Director provides classroom instruction, participates in client interviews, assists in and supervises the drafting legal documents, and offers legal advice regarding a range of issues faced by small businesses, including issues related to corporate formation, choice of entity, intellectual property, employment and licensing agreements, leasing, and financing decisions. The ideal candidate will have significant transactional experience including due diligence and document drafting related to business formation and intellectual property creation and protection.

Other duties will include:
•giving regular and detailed oral and written feedback to students on their performance;
•working with the CIPE Director and Law School Development office on ELC-specific fundraising efforts
•delivering instruction in relevant lawyering and practice skills;
•ensuring professional, ethical, high-quality representation of clinic clients;
•engaging in client and expertise development, including monitoring of relevant legal and business developments; outreach and programming for potential clients and collaborators; and maintaining relationships with clients and external partners such as campus and university system units, industry groups, and law firms;
•participating in advising students participating in the School of Law’s Business, Entrepreneurship & Tax Law Review
•assisting with curriculum design, development of teaching materials, and clinic administration and operations; and
•engaging in independent on-going client representation when necessary.

Qualifications:
•At least three years of experience in relevant transactional, business, or intellectual property practice areas or the equivalent;
•superior writing, editing and verbal skills;
•outstanding academic credentials;
•sound judgment and exceptional ethical standards;
•excellent teamwork and teambuilding skills;
•potential for successful teaching and student supervision;
•publication of articles, essays, or client alerts in media relevant to the practicing bar including municipal or state bar journals, ABA sponsored publications, or specialized journals
•strong organizational and management skills and an aptitude for law practice management and clinic management; and
•admission to practice in Missouri or ability to obtain eligibility no later than December 31, 2019.

The University of Missouri-Columbia is the flagship campus of the University of Missouri system and is one of only 34 public universities in the country belonging to the Association of American Universities. As both a research and land grant university, we have extraordinary opportunities for interdisciplinary research and teaching. In addition, Columbia is regularly ranked as one of the most livable cities in the country.

Application Procedure: Review of applications will begin immediately and continue until the position is filled. To apply, please submit a cover letter indicating teaching and scholarly interests, a CV and three references to the university’s employment portal. Questions about the application process may be directed to Associate Dean Paul Litton at littonp@missouri.edu or CIPE Director Sam Halabi at halabis@missouri.edu.

Additional information about the School of Law is available at law.missouri.edu. The University of Missouri is an equal opportunity/ADA institution and encourages applications from women, candidates of color and other under-represented communities in the legal academy. To request ADA accommodations, please call the Disability Inclusion and ADA Compliance Manager at 573-884-7278

A “Conveyed” Trademark License Cannot be Rescinded in Bankruptcy

Patent

by Dennis Crouch

Today’s Supreme Court trademark case has several important nuggets for intellectual property owners.  Here are two: First, TM licensing is somewhat clarified with the holding that a bankrupt mark-holder cannot simply cancel prior licenses as part of the bankruptcy. Second, the court’s holding here treats a  TM license effectively as a property right that has been transferred rather than a contract with ongoing mutual obligations.  In bankruptcy proceedings, ongoing contracts can ordinarily be rejected by the bankruptcy trustee while prior property transfers are only rarely rolled-back.

Mission Product Holdings Inc. v. Tempnology, LLC (Supreme Court 2019)

The details of this case are fairly obscure bankruptcy issues, but basically begin with the most interesting rule of bankruptcy law that allows the trustee to reject prior executory contracts and leases.

Here, the trademark owner has filed for bankruptcy and rejected a prior trademark license. The question in the case is whether “rejection” under the statute also rescinds the already-granted license. Here, the court holds no – if the rights would survive a contract breach by the licensor then they also survive rejection under the bankruptcy code. Writing for an 8-1 majority, Justice Kagen explains:

The question is whether the debtor-licensor’s rejection of that contract deprives the licensee of its rights to use the trademark. We hold it does not. A rejection breaches a contract but does not rescind it. And that means all the rights that would ordinarily survive a contract breach, including those conveyed here, remain in place.

Entering into property-like language, the court explains the holding as based upon “the general bankruptcy rule that the estate cannot possess anything more than the debtor did outside bankruptcy.”

I’ll note here that the court alludes to the possibility of drafting trademark licenses in ways that they could be rescinded in bankruptcy. So, be cautious about that language.

Justice Gorsuch wrote in dissent – arguing that the case should be dismissed because there is no longer any live controversy since. The license expired during litigation.

Patently-O Bits and Bytes by Juvan Bonni

Bits and Bytes, Patent

Recent Headlines in the IP World:

Commentary and Journal Articles:

New Job Postings on Patently-O:

More Monkey Business in IP Law

Patent

by Dennis Crouch

In re: Infinity Headwear & Apparel, Docket No. 18-01998 (Fed. Cir. 2019).

This case is fairly silly – The claims at issue cover a hooded blanket and stuffed toy combination — found invalid reexamination. On appeal, the patentee argued that the PTAB had conducted an improper claim construction that “equated a monkey with the claimed hood.”

Unlike the present invention, however, Katz’s hooded jacket includes a stuffed monkey attached to, or forming, the back portion of the hood. . . .

[U]nlike the present invention where the hood itself forms the stuffed toy, Katz’s hood is stuffed into monkey to form the stuffed toy. Also, in Katz, a stuffed toy always exists because monkey, which includes separately stuffed arms and legs, is sewn to the back portion of hood. In contrast, in the present invention, no stuffed toy exists until blanket is stuffed into hood.

Invalidity affirmed on appeal (R.36).  Images from the invalidated patent and the key prior art (Katz) are shown below.

 

Yes, I am aware that this case – especially as whimsically presented here – pushes against my call for the Federal Circuit to actually write opinions. The PTAB decision is based upon anticipation, and the patentee provided a series of explanations regarding the distinction between its claims and the single prior art reference. I suspect that the Federal Circuit would actually have a difficult time penning the anticipation case even here.

Federal Circuit has No Opinion; Senju Asks the Supreme Court for Its

Patent

by Dennis Crouch

Back in 2017, I published an article condemning Federal Circuit’s ramped-up practice of issuing R. 36 judgments in cases on appeal from the USPTO.  Rather than simply arguing about policy, I looked at the statute and concluded that Section 144 of the Patent Act requires the Federal Circuit to issue its opinion, not just judgments. Dennis Crouch, Wrongly Affirmed Without Opinion, 52 Wake Forest L. Rev. 561 (2017). Over the past two years many petitioners have raised this argument to both the Federal Circuit and the U.S. Supreme Court.  However, neither court has responded (denying those petitions without opinion).

Now comes Senju Pharmaceutical Co., Ltd., et al. v. Akorn, Inc., No. 18-1418 (Supreme Court 2019) with the following two questions:

  1. Whether 35 U.S.C. § 144’s directive that the Federal Circuit “shall issue … its mandate and opinion” in all appeals from the Patent and Trademark Office precludes the Federal Circuit from resolving such appeals through a Rule 36 judgment of affirmance without opinion.
  2. Whether, under this Court’s decisions in Graham v. John Deere Co., 383 U.S. 1 (1966), and KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Patent Trial and Appeal Board must consider all relevant evidence, including any objective indicia of non-obviousness, when assessing whether a patent is invalid under 35 U.S.C. § 103.

[Read the Petition].

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Senju’s U.S. Patent 6,114,319 claims an emulsified difluprednate (DUREZOL) used in a eye dropper to treat inflammatory eye disorders.  The claimed composition includes castor oil, and polyoxyethylene (20) sorbitan monooleat.

DUREZOL (difluprednate ophthalmic emulsion) Structural Formula Illustration

At the time of the invention (2000), difluprednate was known for the treatment of eye ailments; and the prior art also taught how to formulate steroids in emulsions in ways recited by the patent document.  However, Senju argued against any motivation to combine the prior art by migrating known steroidal suspensions into an emulsion. In addition, Senju presented objective evidence of non-obviousness: including unexpected results and industry praise.  Senju also asked the court to draw an inference from the fact that no other steroid emulsion has been approved by the FDA:

If [Akorn’s] argument that the teachings of Ding made emulsions an obvious choice were correct (which it is not), then one would expect to see several other FDA-approved emulsions after Ding was published—but we do not. . . .

[I]f a steroid eye drop emulsion were obvious in light of the prior art, then some industry player—including the assignees of the scientists whose inventions supposedly rendered petitioners’ invention obvious—would have chosen that formulation. The fact that none did is strong objective evidence of non-obviousness.

These secondary consideration arguments were ignored by the PTAB (although others were considered).  On appeal, the Federal Circuit affirmed without opinion and denied Senju’s petition for rehearing en banc.

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Peter v. NantKwest: Attorney Fees for Challenging PTO Decisions

Patent

Peter v. NantKwest, Inc., No. 18-801 (Supreme Court 2019)

I believe there are many situations where it makes sense to award reasonable costs and attorney fees to the prevailing party.  It goes further to ensure that the injured party is ‘made whole’ and it also discourages folks to push forward with weak arguments.

That said, I don’t like 35 U.S.C. 145. That provision awards the USPTO “all the expenses of the proceedings” regardless of whether the agency wins or loses.  The provision works to discourage the filing of Civil Actions to obtain a patent.  In NantKwest, the USPTO is asking that “all the expenses” be interpreted to include its personnel expenses, including attorney fees, win-or-lose.  The Federal Circuit ruled against the PTO and denied such fees, but the Supreme Court has agreed to hear the case:

Whether the phrase “[a]ll the expenses of the proceedings” in 35 U.S.C. 145 encompasses the personnel expenses the USPTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation.

USPTO’s opening merits brief is due later this week, with amicus filings shortly thereafter.

Until recently, the case was known as Iancu v. NantKwest.  However, in a recent letter to the Supreme Court, Solicitor Noel Francisco indicated that Iancu “is recused in this matter.” Solicitor Francisco suggested that Laura Peter be substituted as petitioner in her official capacity as the Deputy Director of the United States
Patent and Trademark Office.  Thus, the case has become Peter v. NantKwest.

The letter does not indicate the reason for Iancu’s recusal. However, NantKwest is represented by top advocate Morgan Chu from Irell & Manella.  Iancu was managing partner at Irell when the representation began.

If you want it, Claim it

Patent

by Dennis Crouch

Two prosecutions lessons from this case: (1) if you are concerned about obviousness, be careful of broadening statements in the specification; (2) if you want to claim a particular action, particularly claim it.  

BTG Int’l. Ltd. v. Amneal Pharms. LLC (Fed. Cir. 2019) [BTG_Decision]

This is a consolidated appeal from four different district court cases and five different inter partes review cases.  All the cases focus on BTG’s U.S. Patent No. 8,822,438 (hormone based chemotherapy).  For once, the PTAB and District Court decisions meshed – all finding the claims invalid as obvious.  On appeal, the Federal Circuit focused on one of the PTAB decisions and affirmed — with result of mooting the remaining appeals.

The ‘438 patent claims a method of “treatment” by providing a patient with (1) “a therapeutically effective amount of abiraterone acetate” and (2) “a therapeutically effective amount of prednisone.”

The patentee’s primary argument on appeal is that the “treatment” limitation in the preamble should be focused on anti-cancer treatment — and particularly that the “therapeutically effective amount of prednisone” should have an anti-cancer effect rather than ‘merely’ a palliative effect.  The prior art apparently indicated a combination of chemo + prednisone, but did not specifically indicate that the prednisone had anti-cancer impact.

On appeal, the Federal Circuit agreed with the PTO that the “treatment” element should be broadly construed.  This was seemingly a simple case because the patentee used traditional broad language in the specification:

The specification states that a “therapeutic agent” may be either “an anti-cancer agent or a steroid.”

What this means is that the prior art’s use of prednisone as a steroid (for palliative care) directly reads on the claims.

To be fair to the patentee, the patent focuses substantially on the reality that prednisone was found by the patentee to have anti-cancer effects itself.  On appeal, the court effectively says – ‘if you wanted to claim that prednisone as an anti-cancer treatment, write it in the claims.’

 

Although Motivated to Try; No Reasonable Expectation of Success

Patent,

by Dennis Crouch

Novartis Pharm. v. West-Ward Pharm. (Fed. Cir. 2019)

West-Ward (now known as Hikma) is seeking to make and sell a generic version of the Novartis chemotherapy drug everolimus (Afinitor).  After filing its Abbreviated New Drug Application (ANDA), Novartis sued, alleging infringement of its U.S. Patent 8,410,131.

Following a bench trial, the district court sided with the patentee – finding the claims enforceable – not obvious. Novartis Pharm. Corp. v. West-Ward Pharm. Int’l Ltd., 287 F. Supp. 3d 505 (D. Del. 2017).  On appeal, the Federal Circuit has affirmed.

The claims at issue are method-of-treatment claims with one step — “administering … a therapeutically effective amount” of everolimus.  The preamble of claim 1 indicates that the treatment is for “inhibiting growth of solid excretory system tumors.”  Dependent claims 2 and 3 add limitations that the treatment is for a kidney tumor or “advanced solid excretory tumor.”

At the time of the patent filing, the compound (everolimus) was already known as an mTOR inhibitor; and mTOR inhibiors were known to inhibit tumor growth. Everolimus a derivative of rapamycin and structurally similar to temsirolimus — both of which were already identified as chemotherapy treatments for similar cancer types.

The district court took this evidence and agreed that a person of skill in the art would have been motivated to pursue everolimus as a potential treatment for advanced solid tumors. However, the court’s opinion then seemed to contradict itself by saying that there was no motivation to combine the prior art.   The district court also found that everolimus was one of many different research paths and that the prior art was not sufficient to create “a reasonable expectation of success in using everolimus” to treat advanced kidney tumors.

On appeal, the Federal Circuit rejected the district court’s confusing motivation-to-combine analysis, but agreed ultimately that the claims were not proven invalid (with clear and convincing evidence).  In particular, the appellate panel agreed with the lack of reasonable expectation of success.

Truthfully, this doctrine confuses me.  The claims simply call for administering an effective amount of everolimus to treat a solid tumor; and the courts held that a person of skill in the art would have been motivated to pursue administration of everolimus as a potential treatment. In addition to this motivation, the courts also require clear and convincing evidence of a “reasonable expectation of success.”  You might divide these into “a reason to try” and “reason to believe that the attempt would be successful.”

A party seeking to invalidate a patent based on obviousness must prove “by clear and convincing evidence that a skilled artisan would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and that the skilled artisan would have had a reasonable expectation of success in doing so.” Procter & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989 (Fed. Cir. 2009) (quoting Pfizer, Inc. v. Apotex, Inc., 480
F.3d 1348 (Fed. Cir. 2007)).

Another way to think about the doctrine here is that a creation that is “obvious to try” would still be patentable if the attempt was unlikely to succeed.  This situation comes up most often in situations involving many different potential solutions and it would be “obvious” to try each one until the solution is found.

Motivation to Combine: Regarding motivation to combine, the Federal Circuit particularly held that the district court had improperly required the patentee to prove that PHOSITA “would have selected everolimus over other prior art treatment methods.”  That heightened standard does not comport with the law and thus is not required.

I’ll note here that the district court’s approach was appropriate in the setup involving modification of a lead compound.  Precedent asks for an indication that the lead compound would have been selected over other potential lead compounds.  Here, however, the compound was already known and the only “new” element is giving an effective amount to a patient for the purpose of treating a particular illness.

The district court … appeared to apply or conflate the standard for these types of cases by requiring clear and convincing evidence that a person of ordinary skill “would have been motivated to select everolimus.” To the extent the district court required a showing that a person of ordinary skill would have selected everolimus over other prior art compounds, it erred. The proper inquiry is whether a person of ordinary skill would have been motivated to modify the prior art disclosing use of temsirolimus to treat advanced RCC with the prior art disclosing everolimus. This question was answered affirmatively when the district court found that a person of ordinary skill “would have been motivated to pursue everolimus as one of several potential treatment options for advanced solid tumors, including advanced RCC.”

Reasonable Expectation of Success: Despite a motivation to pursue treatment, the district and appellate court found that the claimed treatment would not have been obvious because the prior art did not show a sufficiently high “expectation of success.”

Note here that the requirement is an “expectation” of success — would PHOSITA have expected that the drug would work?  In this case, at the time of the invention, there was no clinical data on everolimus (as an anti cancer agent) and no completed trials for the other similar compounds (only phase I safety-focused data).  And, the district court noted that there had been many many past attempts to find a compound that works — most of them starting with some promise.   On appeal, the Federal Circuit found that the rebuttal evidence and arguments made by the patentee were sufficient to defeat an obviousness finding — giving deference to the district court factual findings.

The district court reviewed the [presented] evidence, determined that the molecular biology of advanced RCC was not fully understood, recognized the limitations in the temsirolimus phase I data, and found that such data did not provide a person of ordinary skill with a reasonable expectation of success. We hold that the district court did not err in its determination and affirm its conclusion that claims 1–3 of the ’131 patent would not have been obvious in view of the asserted prior art.

Non-Obviousness affirmed.

What happens when Patents Are Later Invalidated?

Patent

by Dennis Crouch

Prism Technologies LLC, v.  Sprint Spectrum L.P., dba Sprint PCS, SCT Docket No. 18-1397 (Supreme Court 2019)

The Supreme Court has received a new eligibility challenge from Prism Tech — although this one is in the form of a civil procedure question:

  1. Whether the Federal Circuit Court of Appeals may retroactively expand the scope of its appellate jurisdiction to invalidate patent claims under 35 U.S.C.
    § 101 when those claims were not raised in the petitioner’s appeal or necessary for its judgment?
  2. Whether a district court may disregard a mandate from the Federal Circuit for entry of judgment, and ignore this Court’s precedent, by retroactively applying
    the collateral estoppel doctrine based on a ruling in a subsequent action where there is no mutuality of claims or defenses?

Prism has parallel infringement lawsuits against Sprint and T-Mobile.

  • In the case against Sprint, the jury found infringement and awarded $30 million in damages.  Sprint did not challenge the patent’s validity at trial or on appeal — damages affirmed in a 2016 appellate decision.
  • In the case against T-Mobile, the jury sided with the defendant and found no-infringement.  Prism appealed, but ended up in a worse situation — with a 2017 holding from the Federal Circuit that the asserted claims are ineligible under 35 U.S.C. 101.

The basic question here is whether the late-stage invalidity in T-Mobile can be used to cancel Sprint’s adjudged liability.  So far, the courts have sided with Sprint, although it was important for Sprint’s case that it took pains to slow-walk its post-appeal activity (request for rehearing and petition for certiorari) so that the case still had some life by the time the T-Mobile decision was released.

June 23, 2017 – the Federal Circuit invalidated the patents in the T-Mobile decision. June 27, 2017 (two business days later) – Sprint filed a R.60(b) motion for Relief from Judgment based upon the Federal Circuit’s binding authority “that the patent claims underlying that judgment are invalid as unpatentable under 35 U.S.C. § 101.”  The district court complied and set-aside its prior verdict and the Federal Circuit affirmed — finding no abuse of discretion.

As part of the Sprint timeline, it is notable that the Federal Circuit issued its mandate in May 2017 (before the T-Mobile invalidity decision).  After the T-Mobile decision, Sprint unsuccessfully requested that the Federal Circuit recall the mandate.  However, the court did issue a statement that recall was “unnecessary” because the “mandate does not alter how the district court should decide the preclusive effect of the T-Mobile ruling, which did not exist in May 2017.”

Another important element here a big question about whether the T-Mobile invalidity applied to all of the claims at issue in Sprint (the Federal Circuit retrospectively said yes).

The new petition thus argues that “the Federal Circuit’s interpretation of the T-Mobile Invalidity Decision as covering the Sprint Only Claims is flawed [as a] retroactive expansion of appellate jurisdiction.”

Who needs Proof of Actual Confusion? Not a TM Plaintiff

Patent

by Dennis Crouch

Swagway v Segway and ITC (Fed. Cir. 2019)

The case caption suggests the cause of action – trademark infringement.  Segway complained to the ITC, and the ITC agreed that Swagway’s self-balancing hoverboard products infringe — although it found no infringement for Swagway’s use of SwagTron.  On appeal, the Federal Circuit has affirmed.

The fundamental question in trademark infringement cases is whether “consumers would likely confuse the alleged infringer’s mark with the asserted mark.”  Likelihood of confusion is typically proven based upon a set of factors known as the DuPont factors. In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).  Although the DuPont case focused on TM registration, courts are now applying the same factors in infringement cases.  See, In re Guild Mortg. Co., 912 F.3d 1376 (Fed. Cir. 2019).

Swagway argued on appeal that the most critical factor in this case should be whether anyone is actually confused.  The products have been sold concurrently for several years any “likely” confusion should be apparent in proof of actual confusion.  No substantial actual confusion was proven – and Swagway suggests that should end the conversation with a no-infringement verdict.

The problem for Swagway here is that the Federal Circuit has substantial precedent on lack of actual confusion during concurrent use — requiring that the accused infringer show “long-term, concurrent use in the same channels of trade.”  And, Swagway did not provide evidence to meet that requirement.

As I was writing this post in a coffee shop, I asked one person whether she would be confused that Swagways were actually Segways — she told me “no.” It turns out that Segway presented no survey evidence of likelihood of confusion.  No matter, Federal Circuit precedent holds that a lack of survey evidence does not lead to an inference that no confusion exists. “The Commission therefore did not err in according no weight to Segway’s lack of survey evidence.”

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In a separate part of the decision, the Federal Circuit also issued an interesting civil procedure squb:”[W]e hold that the Commission’s trademark decisions, like its patent decisions, do not have preclusive effect.”

 

Federal Circuit: “The Doctrine of Equivalents Applies ONLY in Exceptional Cases”

Patent

Amgen Inc. v. Sandoz Inc. (Fed. Cir. 2019)

Amgen sued Sandoz for infringing its U.S. Patents 6,162,427 and 8,940,878. Both patents relate to Amgen’s biologic products (filgrastim and pefilgrastim) used as treatments for neutropenia. The lawsuit here is unique because it was filed under Biologics Price Competition and Innovation Act (“BPCIA”).  As an add-on to Hatch-Waxman, the BPCIA defines submission of an FDA biosimilar application (aBLA) as a form of patent infringement.  See 35 U.S.C. § 271(e)(2)(C) (defining submission of an aBLA as an act of patent infringement).

The ‘472 patent claims a “method of treating a disease” by giving a patient Filgrastim/Pegfilgrastim prior to chemotherapy in order to stimulate stem-cell growth.   After treatment with Filgrastim, the claims require “administering to the patient a disease treating-effective amount of at least one chemotherapeutic agent.”  The idea here appears to be that the Filgrastim will stimulate stem-cell growth so that stem cells will survive harsh cancer treatment.

In this case, Amgen argued that its “disease treating-effective amount of … chemotherapeutic agent” would not necessary require that the chemotherapy drug treat the underlying disease — rather, Amgen argues that the drug could be used to further mobilize stem cells.  Both the district and appellate courts rejected this claim construction proposal — noting that the focus of the claims is “treating a disease” and construing the claim otherwise does not make sense:

As an initial matter, the preamble of claim 1, as construed, arguably precludes Amgen’s construction. The district court construed the preamble, “[a] method of treating a disease requiring peripheral stem cell transplantation,” as requiring that the stem cell transplant be incorporated as a component of a method of treating an underlying disease, such as cancer, Claim Construction Order, 2016 WL 4137563, at *5–6, and Amgen does not dispute that construction on appeal. The claimed method therefore must be performed to treat an underlying disease. As the claim itself states, the “disease treating-effective amount” of a chemotherapeutic agent does precisely that.

The court suggests here that if Amgen had not wanted to claim treatment of an underlying disease, it should have drafted different claims. “Had Amgen simply wanted to claim a method of mobilizing stem cells, in any context, it could have done so.”

The ‘878 patent is not a method of treatment but instead directed to a multi-step method of preparing purified biologic products.  This begins with growing cells that express the protein of interest and ends with eluting the protein from a separation matrix such as ion exchange resin.

In its claim construction, the district court held that the claims required separate steps of “applying a refold solution”; washing the solution; and eulting the protein.  That construction eliminated infringement since Sandoz process only requires one step — applying the refold solution without washing or eluting.  On appeal, the Federal Circuit argued that Sandoz’ approach is effectively the same — and that its claims should be read as functional requirements rather than actual process steps.

The Federal Circuit sided with the accused infringer — holding that each step in the method is a separate process step that must be done in a particular order.  Most notably, the court noted (1) the fact that the patentee had sequentially listed its steps a-g; and (2) the washing and eluting steps are “consistently described in the specification as separate steps performed by different solutions.”

Doctrine of Equivalents: The claim construction here naturally raises a doctrine of equivalents question, which the Federal Circuit also rejected:

Amgen argues that Sandoz’s one-step, one-solution process is insubstantially different from the claimed three-step, three-solution process because it “achieves the same functions (washing and eluting), in substantially the same way (binding protein preferentially compared to contaminants, and then raising salt concentration to reverse protein binding) to achieve the same result (protein purification).”

The Federal Circuit found, however, that the one-step approach offered by Sandoz, “does not function in the same way as the claimed process.”  In particular, the court focused-in on the notion that doctrine of equivalents is handled on an element-by-element level. Here, since each claim step is a separate step occurring in sequence – it would be improper to say that that a single-step approach is the equivalent. The court explains:

The doctrine of equivalents applies only in exceptional cases and is not “simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims.” Duncan Parking Techs., Inc. v. IPS Grp., Inc., 914 F.3d 1347, 1362 (Fed. Cir. 2019) (“[T]he doctrine of equivalents cannot be used to effectively read out a claim limitation . . . because the public has a right to rely on the language of patent claims.” )

Although I follow the court’s line of thinking on claim construction, but the court’s limit of the DOE to “exceptional cases” seems to be a major step without precedential backing. 

102(f), Where have you Gone?

Patent

Endo v. Actavis (Fed. Cir. 2019)

Obviousness is a tough issue to appeal because its flexible fact-heavy analysis lends itself to giving deference to the fact-finder.  This is a case-in-point.

Endo is the exclusive licensee of Mallinckrodt’s U.S. Patent 8,871,779 covering a form of the opioid oxymorphone.  Claim 1 is directed to a highly pure form of “oxymorphone” with “less than 0.001% of 14-hydroxymorphinone.”

Actavis argued that the claims were invalid as obvious.  However, following a bench trial the Delaware district court sided with the patentee — holding that the claims had not been proven invalid with clear and convincing evidence.

The district court did make a major legal mistake — holding that confidential communications between the FDA and oxymorphone producers (including the patentee) were not prior art.  In the communications, the FDA “mandated that opioid
manufacturers reduce ABUK impurities in oxycodone and oxymorphone to below 0.001%” — the exact result claimed by Mallinckrodt. On appeal, the Federal Circuit found the communications prior art under pre-AIA § 102(f) (“A person shall be entitled to a patent unless (f) he did not himself invent the subject matter sought to be patented.”).  Note that 102(f) was eliminated by the AIA and so this type of confidential communication will likely not be counted as prior art in future cases.

On appeal, the Federal Circuit held that the FDA communication – despite being prior art – did not show that the claims were obvious. Although the communications expressly set out the low-impurity goal and was the motivational force for the research, it did not set out the solution created by the patentee.

The majority opinion was penned by Judge Wallach and joined by Judge Clevenger.  Judge Stoll wrote in dissent — arguing that the error was not harmless.  In particular, the FDA mandate actually expressly discloses every limitation found in claim 1, “yet, the district court determined that this mandate did not disclose ‘anything substantive relevant to obviousness.'”

While we owe deference to a district court’s factual findings, such deference is not due where the trial court applies the incorrect standard to arrive at those findings. I would vacate the district court’s decision and remand for a proper analysis under the correct legal standards.

According to the dissent, the FDA statement would have provided substantial motivation to combine prior art references that worked toward the proffered solution.

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102(f) what have we lost: Inventor is given secret information that leads to creation of the invention.  That information is a 102(f) reference under pre-AIA law and can also be used to as part of an obviousness argument. Post-AIA, the provision was wholly eliminated except that the law still supports a narrow action for complete derivation.

CAFC Affirms Exceptional Case and Maybe Encourages Sand-Bagging

Ethics, Patent

By David Hricik

Thermolife Int’l LLC  v. GNC Corp. (Fed. Cir. May 1, 2019) (here) is pretty interesting.  Plaintiffs (Stanford University was one of them) filed about 80 lawsuits, settling many for nuisance value.  Among the 80 defendants were Hi-Tech Pharmaceuticals, Inc. and Vital Pharmaceuticals, Inc. (“Hi-Tech”).  The defendants moved for and lost summary judgment on invalidity, but then the parties agreed to bifurcate further proceedings, with invalidity being determined first.

The trial court held after a bench trial that the asserted claims were invalid under 102 and 103.  A month after that, Hi-Tech moved for an exceptional case finding, but based upon lack of adequate pre-suit investigation into (wait for it) infringement.  The accused products had been publicly available and their labels indicated no infringement (insufficient amounts of one ingredient).

The court allowed plaintiff’s counsel to explain what pre-suit investigation had been done, but the trial court struck the declaration as belated.  Beyond that, the response did not fully address the claims and issues Hi-Tech had raised.  The court then found the case exceptional, essentially reasoning that because the labels indicated no infringement and the products were publicly available, the lawyers should have tested them, but did not.

The panel affirmed (Taranto, Bryson, Stoll).  Calling the determination unusual, the court nonetheless found no abuse of discretion. It noted that Hi-Tech had not “give early notice of the defects in plaintiffs’ infringement assertions that later became he basis for the fee award,” but concluded that because of the numerous suits and need to consolidate this “reasonably led not only to coordination among numerous defendants but to the agreement of all parties, for efficiency, to give priority to the common issue fo validity so that even discovery as to party-specific issues like infringement could be postponed.”  In addition, the court found no abuse of discretion that the pre-suit investigation had been inadequate given the labels and publicly-available products.

I suppose in the narrow sense of mass consolidated suits, the award of fees makes sense, but if the concept is taken out of context, one could imagine defense firms racking up hours hoping for a win on a hard issue while then using an easy issue to establish an exceptional case.  Further, if the invalidity case was close, presumably the amount of fees (not mentioned in the appeal and not challenged) would reflect some discount or adjustment since invalidity was, presumably, not “out of the ordinary.”

Interesting case, not for the merits of finding no adequate pre-suit investigation, but for the rest.

The CASE Act: Copyright Small Claims Court

Patent

by Dennis Crouch

Few patent litigators would file a lawsuit if the potential payout is less than $1,000,000 — that amount ordinarily does not cover the expected cost of litigation and risk of loss. Except in the most simple cases, copyright litigation can be similarly expensive.  What this means is that it can be difficult to earn a regular ‘living’ independently creating and licensing intellectual property.

A bipartisan group of legislatures are working on a small claims solution and have proposed the CASE Act: Copyright Alternative in Small-Claims Enforcement Act of 2019.

The basics: The statute calls for creation of a “Copyright Claims Board” empowered to decide infringement cases with a limit of $30,000 damage award per case and no injunction (except to enforce a settlement agreement) and no attorney fees (except for bad faith conduct).  Although the Board will be based in DC, hearings will be via the internet with very limited procedural requirements.

I like it in theory, but need to consider implementation aspects.  Small claims IP court in the UK has received a good amount of positive response — three tiers: Small Claims (<£10,000); Smallish Claims (<£500,000); and Everything Else.

Read the Bill: https://www.congress.gov/bill/116th-congress/house-bill/2426/text

 

 

Unfair Competition at the USITC

Patent

Amarin Pharma, Inc. v. International Trade Commission (Fed. Cir. 2019)

In 2017, Amarin filed a Section 337 complaint at the ITC — alleging unfair competition against several dietary supplement importers.  Amarin sells a prescription drug containing a particular omega-3 fatty acid known as EPA (eicosapentaenoic acid).

A number of supplement companies started importing synthetic omega-3 fatty acids and Amarin looked for a way to shut them down.  Although Amarin’s formulation is patented, the importers are apparently not close-enough to infringe the patents.  Amarin thus turned to unfair competition law with the following logic: The imported “supplements” are actually drugs that have not been FDA approved and are not properly labelled.  The Food, Drug, and Cosmetic Act (FDCA) requirements served as the foundational basis for the lawsuit.  Here, however, the FDA intervened to argue that the FDCA prohibits private enforcement actions “including unfair trade practice claims that seek to enforce the FDCA.” (quoting opinion).

The ITC then dismissed the case — agreeing that the allegations here are precluded by the FDCA.  POM Wonderful LLC v. Coca-Cola Co., 573 U.S. 102, 109 (2014) (“Private parties may not bring [FDCA] enforcement suits.” (citing 21 U.S.C. § 337)).

On appeal, the Federal Circuit has affirmed holding:

  1. The appellate court has authority to review refusals to non-institution decisions that are effectively final determinations on the merit.
  2. The ITC has discretion as to whether to institute an investigation. In particular, “the Commission may decline to institute an investigation where a complaint fails to state a cognizable claim under § 337.”
  3. On the merits here, the “complainant fails to state a cognizable claim under § 337” since the claim cannot be fundamentally based upon a yet-unadjudicated  claim of FDCA violation. “Such claims are precluded by the FDCA.”

The majority opinion was authored by Chief Judge Prost and joined by Judge Hughes.  Judge Wallach wrote in dissent —  arguing that the court did not have appellate jurisdiction because the ITC’s refusal to institute an investigation does not count as a “final judgment” as required by the Federal Circuit’s jurisdictional statute. (The court has jurisdiction “to review the final determinations of the [ITC] relating to unfair practices in import trade, made under [§ 1337].” 28 U.S.C. § 1295(a)(6).)

= = = =

In my mind, the case leaves-out a major element — the fact that ITC Section 337 litigation is not a civil action brought by a private party.  Rather, investigations are instituted and conducted by the ITC. This is why, on appeal, the ITC is always a party rather than just the decision-maker.   Thus, at least technically, ITC proceedings are “by and in the name of the United States” as required by the FDCA act.

TTI v. IBG: Federal Circuit clarifies meaning of “technical solution to a technical problem”

Patent

Trading Technologies International, Inc. v. IBG LLC, Interactive Brokers, LLC (Fed. Cir. April 19, 2019).  Panel: Moore (author), Mayer, and Linn  Download TTI v IBG (April 18, 2019)

Trading Technologies International, Inc. v. IBG LLC, Interactive Brokers, LLC (Fed. Cir. April 30, 2019), Panel: Moore (author), Clevenger and Wallach.  Download TTI v. IBG (April 30, 2019)

This is a long post since it covers two opinions addressing Covered Business Method (CBM) review for business method claims, plus discussion of two related opinions for good measure.  tl;dr: The Federal Circuit affirmed the PTAB that the claims are subject to CBM review and are directed to ineligible subject matter.  Along the way it clarified some its jurisprudence interpreting the threshold CBM review regulation.

A potential conflict disclosure at the outset: MBHB, which represented Trading Technologies on these appeals, is the primary financial sponsor of PatentlyO.

On to the writeup…

***

Background

Both April opinions in TTI v. IBG involve the same procedural posture, the same general subject matter (displaying market information to traders), and the same issues on appeal: whether the claimed inventions are subject to the “technological inventions” exception to CBM review and whether they claim patent eligible subject matter.  In both cases, the PTAB concluded that the patents were subject to CBM review and held the patents directed to patent ineligible subject matter.  Of the two opinions, the court’s April 18, 2019 opinion is meatier on both issues, so I’ll mainly focus that one.

The two April opinions also provide a counterpoint to the court’s February nonprecedential opinion involving the same parties, the same area of technology, the same procedural posture (appeal from Covered Business Method review decisions by the PTAB), and for some of the patents, the same outcome at the PTAB: lack of subject matter eligibility.   See TTI v. IBG (Fed. Cir. Feb 13, 2019) (nonprecedential).  Writing per curiam, the panel in the February opinion (Judges Lourie, Moore and Reyna) held the patents were for “technological inventions,” and thus were not properly subject to CBM review.  In the two April opinions, overlapping panels (Judges Moore, Mayer and Linn in one and Judges Moore, Clevenger and Wallach in the other) reached the opposite conclusion on different sets of GUI patents.

“Patents for Technological Inventions”

A threshold question for CBM review is whether the patents-in-suit are “patents for technological inventions.   Generally, CBM review is available “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service…”  America Invents Act, § 18(a)(1)(E).  However, this mechanism comes with an important caveat: “…except that this term does not include patents for technological inventions.”  Id.

The USPTO regulation implementing the “technological invention” exception states that:

In determining whether a patent is for a technological invention solely for purposes of the Transitional Program for Covered Business Methods (section 42.301(a)), the following will be considered on a case-by-case basis: whether the claimed subject matter as a whole recites a technological feature that is novel and unobvious over the prior art; and solves a technical problem using a technical solution.

37 C.F.R. § 42.301(b). In Versata v. SAP, 793 F.3d 1306 (Fed. Cir. 2015), the Federal Circuit criticized the regulation while offering a sliver of guidance.  “In short, neither the statute’s punt to the USPTO nor the agency’s lateral of the ball offer anything very useful in understanding the meaning of the term ‘technological invention,'” the court wrote, concluding that “we agree with the PTAB that this is not a technical solution but more akin to creating organizational management charts.”  Id. at 1326, 1327.  

In a subsequent opinion, the court clarified the regulation as involving a “prong”-type analysis: that is, if a patent fails to meet either the “technological feature” or the “solves a technical problem using a technical solution,” it is not a “technological invention.”  See Apple v. Ameranth, 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“We need not address this argument regarding whether the first prong of 37 C.F.R. § 42.301(b) was met, as we affirm the Board’s determination on the second prong of the regulation—that the claimed subject matter as a whole does not solve a technical problem using a technical solution.”)  The court did not elaborate on the meaning of the “solves a technical problem using a technical solution” language.

Meaning of “solves a technical problem using a technical solution”

The two April TTI v. IBG decisions shed additional light on the meaning of the “technical problem” and “technical solution” prong, drawing a distinction between the practice of a financial product as opposed to a technological invention:

“TT argues the inventions addressed technical problems in the way prior art GUI tools were constructed and operated. It claims the ’999 patent addressed problems related to speed, efficiency, and usability, and the ’056 patent. It claims the ’999 patent addressed problems related to speed, efficiency, and usability, and the ’056 patent addressed problems related to intuitiveness, visualization, and efficiency.”

April 18, 2019 Slip Op. at 8-9.  The Federal Circuit held that this is not a technical solution to a technical problem:

“We agree with the Board that the patents relate to the practice of a financial product, not a technological invention.  The specification states that a successful trader anticipates the market to gain an advantage, ’999 patent at 1:20–26, but doing so is difficult because it requires assembling data from various sources and processing that data effectively, id. at 1:51–54. The invention solves this problem by displaying trading information “in an easy to see and interpret graphical format.” Id. at 2:3–6. The specification makes clear that the invention simply displays information that allows a trader to process information more quickly.”

Ultimately, “This invention makes the trader faster and more efficient, not the computer.  This is not a technical solution to a technical problem.”  April 18, 2019 Slip Op. at 9 (emphasis in original).

Additional language in the opinion reinforces this line between business problems and solutions and technological problems and solutions.  In rejecting a challenge to the PTAB’s decision not to consider the testimony of TTI’s expert, the court wrote “Nothing in his declaration asserts that the claimed interface did anything other than present information in a new and more efficient way to traders. Even if the Board had considered this testimony, it could not have reached a different conclusion.”  April 18, 2019 Slip Op. at 10.  Analyzing another GUI patent, the court stated that providing the trader with information in the claimed manner “is focused on improving the trader, not the functioning of the computer.”

“Indeed, the specification acknowledges that the invention ‘can be implemented on any existing or future terminal with the processing capability to perform the functions described,’ id. at 4:4–6, and ‘is not limited by the method used to map the data to the screen display,’ which ‘can be done by any technique known to those skilled in the art,’ id. at 4:64–67.”

The court’s April 30 opinion, reached the same conclusion on a different patent using similar reasoning.  “Merely providing a trader with new or different information in an existing trading screen is not a technical solution to a technical problem,” the court wrote, before repeating the language about the method focusing on “improving the trader, not the functioning of the computer.”   Apr. 30, 2019 Slip Op. at 7.

One final notable aspect of this set of the opinions: By affirming the PTAB on the second prong of the “technological inventions” regulation, the Federal Circuit avoided needing to address TTI’s argument that “Versata set aside the novelty and nonobviousness language of the first prong of the regulation….”  Apr. 18, 2019 Slip Op. at 8.  That issue remains unsettled.

Patent Eligible Subject Matter

The Federal Circuit affirmed the PTAB on the issue of lack of patent eligible subject matter for all the patents-in-suit in a fairly routine review.  The court conducted the Alice two-stage analysis, concluding that the claims were directed to abstract ideas and did not include an inventive concept.  The most interesting aspect of this component of the court’s analysis is the relationship with the 2017 TTI v. CQG nonprecedential opinion discussed below.

Constitutional Challenges: Not preserved by four sentences

The court declined to address TTI’s constitutional challenges, which consisted of “a total of four sentences in each of its opening briefs” based on “a right to a jury under the Seventh Amendment, separation of powers under Article III, the Due Process Clause, and the Taking Clause.”  “Such a conclusory assertion with no analysis to the underlying challenge is insufficient to preserve the issue for appeal.”  Id.

***

Relationship with Prior Decisions

As I noted at the outset, these opinions represent a counterpoint to the court’s February nonprecedential opinion, although since the April decisions are precedential and the February one was not, there isn’t direct legal tension.

The February opinion involved a review of a set of CBM review PTAB decisions finding that the both the two patents involved an even earlier opinion, Trading Technologies International, Inc. v. CQG, Inc., 675 F. Appx 1001 (Fed. Cir. 2017) (nonprecedential), and two other patents were not “technological inventions” and therefore were subject to CBM; in the subsequent CBM review, the PTAB held that the two patents from TTI v. CQG were directed to patent eligible subject matter but the other two patents were not.  As with the April decisions, all the patents involved GUI claims.

The Federal Circuit reversed as to the institution decision on all four patents.  For the two patents involved in TTI v. CQG, the Federal Circuit reasoned that because the two patents were directed to patent eligible subject matter, they must be “technological inventions.”  For the other two patents, the Federal Circuit reasoned that “because we see no meaningful difference between the claimed subject matter [of the two sets of patents] for purposes of the technological invention question, the same conclusion applies in those cases as well.  (This is puzzling to me, since the PTAB held that the first set of patents were directed to patent eligible subject matter but the second set were not.)

There’s also the tension between the subject matter eligibility determination in TTI v. CQG and the lack of subject matter eligibility determinations in the two April 2019 TTI v. IBG decisions, but I’ll leave that for others to opine on.  The Federal Circuit itself declined TTI’s invitation to get into the specifics of how its April 2019 decisions relate to the earlier decisions:

“TT argues that because nonprecedential decisions of this court held that other TT patents were for technological inventions or claimed eligible subject matter, we should too. We are not bound by non-precedential decisions at all, much less ones to different patents, different specifications, or different claims. Each panel must evaluate the claims presented to it. Eligibility depends on what is claimed, not all that is disclosed in the specification.”

April 18, 2019 Slip Op. at 19.

In re Morinville: Biz.Orgs. Not Patent Eligible

Patent

In re Paul Morinville (Fed. Cir. 2019)

Morinville is an independent inventor and inventor-advocate.  In the photo to the right, see Morinville burning one of his patent documents. He is also a regular contributor to Gene Quinn’s IPWatchdog site.

In this case, Morinville is attempting to patent a method of reorganizing a business hierarchy into a more centralized functional hierarchy.  Example: Move from Fig. 1 to Fig. 2.

Operationally, the claims require association of “roles” with each position, including a “major function” and then identifying positions in the hierarchy that have functional commonality between the roles.  Those associations are then used to generate a new hierarchy. And, “each of the steps is automatically implemented in the computer.”

The application was filed back in 2004.  In its first office action (2008), the examiner rejected the claims as directed to an abstract idea (applying a machine-or-transformation test) and also anticipated and obvious.  That rejection was followed by a second non-final rejection in 2009 and a final rejection in 2009.  During that time, Morinville added an “implement it on a computer” requirement, which satisfied the PTO on 101 grounds.  Morinville appealed the other rejections and filed his appeal brief in 2010.  Later that year, the examiner reopened prosecution with new obviousness rejections that were made final in 2011.  Morinville appealed again and won — with a 2012 PTAB decision finding the claims non-obvious (or at least that they have not been shown to be obvious).  However, rather than allowing the case, the examiner issued a new set of rejections on post-Alice eligibility as well as a new anticipation rejection. That rejection was then made final.  On appeal, the PTAB affirmed the examiner’s eligibility rejection — finding that the claims were effectively directed to an unpatentable abstract idea.  The PTAB explained:

The subject matter of claim 1, as reasonably broadly construed, is drawn to a business administration concept for management of a business; that is, claim 1 is focused on a methodology of creating a functional organizational structure from a hierarchical operational structure and controlling access to business processes based on the created functional structure. . .

We find the concept of organizational structure, in which an organization can be structured in different ways, and managing access to  business processes based on an organizational structure, is a well-established business practice, and an idea with no particular concrete or tangible form. Furthermore, we find the “computer” of claim 1 is invoked merely as a tool and does not provide any specific improvement in computer capabilities.

Now on appeal, the Federal Circuit has affirmed.  Writing for the court, Judge Newman explained that organizing a hierarchy is “a building block, a basic conceptual framework for organizing information” and thus abstract.  The court also agreed with the PTO that Mr. Morinville’s “computer” elements were claimed at such a “high level of generality” so as to have no grounding effect sufficient to transform the abstract idea into a patent eligible invention.

Read it here.

Eligibility Cannot be Raised in IPR Appeal

Patent

Neptune Generics v. Eli Lilly (Fed. Cir. 2019)
Mylan Labs v. Eli Lilly (Fed. Cir. 2019)

This appeal combines twelve different inter partes review (IPR) proceedings. In each case, the PTAB Board sided with the patentee — holding that the claims of Lilly’s U.S. Patent 7,772,209 were not proven invalid.  On appeal, the Federal Circuit has affirmed.

Premetrexed disodium is a drug treatment for malignant mesothelioma that works as a folate antagonist — blocking cell usage of folic acid necessary for rapid DNA replication.  The drug has major side effects addressed by the Lilly patent.  In particular, the claimed invention calls for a pre-treatment of a patient with folic acid and vitamin B12 in order to reduce the risk skin rashes, fatigue, etc.

The patent itself calls the idea here “surprising[] and unexpected[]” — since the pre-treatment with folic acid does not appear to reduce the therapeutic efficacy of the premetrexed disodium whose intent is to reduce folate availability.

The prior art already taught pre-treatment with folic acid, but not the combination with vitamin B12. The PTAB found the addition of vitamin B12 a non-obvious step — especially when considered in light of the FDA’s express skepticism of the treatment approach.

The challengers here focused on an obvious-to-try argument — pointing out that some of the side-effects of premetrexed disodium suggest vitamin-B12 deficiency.  On appeal, however, the Federal Circuit explained that other side-effects pointed away from a vitamin-B12 deficiency. Thus, according to the court, the PTAB’s conclusions of nonobviousness were supported by substantial evidence.

Post-Invention Statements to the FDA: In its application for a new drug treatment, Lilly explained to the FDA that the prior art “suggested that pretreating with folic acid and B12 was a no-risk, predictable way to lower pemetrexed-induced fatalities by lowering pretreatment homocysteine levels.”  This statement suggests strongly that the invention was obvious.  However, the Court rejected the post-invention statement by Lilly as “made through the lens of what they had invented” and therefore not actually indicative of the pre-invention prior art.

Patent Eligibility: Patent Eligibility cannot be challenged in IPR proceedings. Still, on appeal the patent challengers argued that the claims here are so far beyond the pale of eligibility that the court should simply reject the claims as a matter of law.  When questioned regarding appellate jurisdiction, the challengers cited the Administrative Procedures Act requirement that “a reviewing court shall decide all relevant questions of law. . . . This Court’s review is not limited to the grounds considered by the Board (either implicitly or explicitly) where the question is one of law. See In re Aoyama, 656 F.3d 1293, 1299 (Fed. Cir. 2011) (holding that this Court could reach indefiniteness for the first time on appeal since it is a question of law).”

On appeal here, however, the Federal Circuit refused the chance to opine on eligibility — holding that IPR proceedings are limited only to obviousness and anticipation, and appeals are likewise limited.

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My new mark: “TRADEMARK 2.0”

Patent

by Dennis Crouch

VersaTop v. Georgia Expo (Fed. Cir. 2019)

First of all — holy decimal! VersaTop owns the registered trademark “2.0” as it relates to the company’s portable trade show display booths and stages.

Mark Image

VersaTop sued its competitor Georgia Expo for its use of the “2.0” mark along with a longer version “PIPE & DRAPE 2.0.” These companies compete in the “pipe & drape” market, and so the only unique or distinctive part of the mark is the “2.0.”  In my mind, this is like claiming ownership of “Internet Services 2.0” or “House Building 2.0.”  Rights are possible, but I’d want some clear proof of distinctiveness.

I’ll note here that the registration application was filed back in October 2015.  Two days later VersaTop filed the infringement lawsuit asserting rights to the unregistered marks.

What appears to have happened here is that VersaTop created a new connector that it called Pipe & Drape 2.0. The new approach was popular and Georgia Expo (allegedly) copied the design and also used the same name.  At the time, there was no generic name for this new style and so Georgia Expo free-rode on the familiarity already created by VersaTop.  See Georgia Expo’s brochures below that includes both the “PIPE & DRAPE 2.0” words and also – it turns out – photos of the VersaTop product being passed-off as those of Georgia Expo.

The district court dismissed the case on summary judgment — although not because an unregistered 2.0 is such a weak mark. Rather, the court came-up with a funky determination of no infringement because the marks were not “affixed” to goods “sold or transported in commerce.”   Rather, the marks were on distributed brochures for an up-and-coming product.

On appeal, the Federal Circuit has reversed — finding that the district court too narrowly interpreted the trademark rights.   In particular, the district court appears to have confused the use in commerce requirement for TM registration as co-existent with the use in commerce element of infringement.

The district court in this case incorrectly applied the definition of “use in commerce” that is included in the statute for purposes of trademark registration. This definition does not apply to trademark infringement.

Rather, the Federal Circuit held that – for infringement – a commercial purpose leading to a likelihood of confusion is going to be sufficient.  Here, the defendant “admitted that it used VersaTop’s marks in its advertising and brochures, and that the parties ‘compete directly’ in the drape and rod industry.”  That was sufficient for an infringement finding.

To be clear, rather than simply vacating the non-infringement summary-judgment, the court reversed and issued a judgment of infringement in favor of VersaTop.

= = = = =

Circling back to my prior comments regarding the weakness of the mark – according to the Federal Circuit, Georgia Expo appears not to have challenged its validity or enforceability.