Federal Circuit Flips “Negative Claim Limitation” Decision after Change in Panel Composition

Patent,

By Chris Holman

Novartis Pharms. Corp. v. Accord Healthcare, Inc., 2022 WL 2204163, — 4th —  (Fed. Cir. June 21, 2022)

Here we have a case in which a petition for rehearing by the Federal Circuit leads to a flipped decision that appears to be the consequence of a change in panel composition.

In the original decision, authored by Judge O’Malley and decided January 3, a divided panel upheld a district court’s determination that the patent claims at issue were not invalid for failure to satisfy the written description requirement. The Federal Circuit agreed to rehear the case, but the composition of the panel rehearing the case was altered by the replacement of Judge O’Malley (who retired in March) with Judge Hughes. The reconfigured panel flipped the result of the earlier decision, this time reversing the district court.  The second decision was authored by Judge Moore, the dissent in the original decision. Judge Linn, who sided with Judge O’Malley in the original decision, found himself writing in dissent the second time round.

The relevant issue before the court was whether a negative claim limitation was adequately supported by the priority patent application. The claims are directed towards methods of treating relapsing-remitting multiple sclerosis (RRMS) through the administration of fingolimod (an immune suppressant) “at a daily dosage of 0.5 mg, absent an immediately preceding loading dose regimen.”  The “no loading dose” limitation was added by amendment during prosecution in order to overcome an obviousness rejection.  A loading dose is a “higher-than-daily dose,” usually given as the first dosage in a dosing regimen.   It was undisputed that loading doses were well-known in the medical field generally, and that loading doses have been used with some medicaments used in the treatment of MS.

The priority application does not explicitly mention loading doses, let alone the absence of a loading dose, but the district court nonetheless found implicit support for the negative claim limitation in two examples provided in the specification (one a prophetic human clinical trial, the other an experiment conducted in rats) which disclosed dosage regimens that did not involve the use of an initial loading dose. There was expert testimony to the effect that a person of skill in the art (POSA) reading the examples would have understood them as being “complete,” and as such the fact that the examples do not mention a loading dose implicitly discloses a dosage regimen that is not preceded by a loading dose.

In the original decision upholding the district court’s decision as not erroneous, Judge O’Malley emphasized that the majority was not instituting a “new and heightened standard for negative claim limitations,” and acknowledged that the disclosure need not describe a limitation in haec verba.  Writing in dissent, Judge Moore argued that the “no loading dose” limitation could not possibly find adequate support in a patent specification that fails to even mention loading doses.

Writing for the majority in the second opinion, Judge Moore reiterates her position that the district court clearly erred in finding written description support for the “no loading dose” limitation. While she acknowledges that a negative claim limitation does not necessarily require explicit written description support when the specification describes a reason to exclude the relevant element, e.g., when the specification identifies disadvantages of using that element, or “distinguishes among” the element and alternatives to it, she maintains that the element must at least be disclosed in some form, given that “the hallmark of written description is disclosure.” Judge Moore does not dispute that the written description requirement can be satisfied if a skilled artisan would have understood that the specification inherently discloses the negative limitation, but she found no evidence on the record in this case that a skilled artisan would understand silence regarding a loading dose to “necessarily exclude” a loading dose.

In his dissent, Judge Linn does not so much disagree with Judge Moore’s characterization of the law of written description, as with the way the majority applied that law to the facts of this case. In particular, he complains that majority improperly required the priority application to disclose that the negative limitation in question was “necessarily excluded”.  He argues that it can be sufficient for the specification to merely provide a “reason to exclude” the negative claim limitation.

 

Judicial Recusal Order Saves Cisco $2.75 Billion

Patent

by Dennis Crouch

Cisco has escaped its $2.75 billion patent infringement loss with a recusal order based upon the fact that the Judge’s spouse owned $5,000 in Cisco stock. 

Centripetal Networks, Inc. v. Cisco Systems, Inc. (Fed. Cir. 2022)

Judge Dyk wrote this opinion ordering the recusal of E.D. Va. Judge Henry C. Morgan based upon his spouse’s ownership of about $5,000 of Cisco stock. The order also vacates all orders and opinions in the case entered after Judge Morgan learned of her ownership.

In this situation, the (rather small) financial interest suggests tilting things in Cisco’s favor. But, here is the crazy thing: The outcome of the case was a $2.75 billion verdict for the patentee Centripetal — i.e., Cisco lost the case. When Judge Morgan learned of the ownership, he immediately notified the parties. Centripetal indicated that it had no problem with Judge Morgan continuing to hear the case.  But, Cisco concluded that it was likely to lose the case anyway and so requested Judge Morgan recuse himself under 28 U.S.C. § 455.   The Judge denied Cisco’s motion for recusal and eventually awarded the absolutely huge judgment against Cisco.

Spousal activity and recusal has been in the news lately with Justice Thomas and his spouse’s political advocacy.  Although judicial codes of ethics provide guidance. Congress has also created a statutory regime that requires recusal in certain situations. On point for this case, the statute calls for recusal if a judge “knows that he … or his spouse … has a financial interest … in a party to the proceeding, or any other interest that could be substantially affected by the outcome of the proceeding.”  28 U.S.C. § 455(b)(4).  This requirement to step-down is not waivable. § 455(e).

Here it is clear that Judge Morgan falls within § 455(b)(4).  However, the statute goes on to indicate that a judge who has devoted substantial judicial time to a matter can keep the case so long as they “divest [themselves] of the interest that provides the grounds for the disqualification.”  § 455(f).  Here, Judge Morgan took the step of placing the stock in a blind trust.  However, the Federal Circuit here held that the blind trust was not sufficient for the statutory requirement of “divest[ment].”

Judge Morgan had considered simply selling the stock, but was concerned about the appearance of insider training. On appeal, the Federal Circuit added a footnote concluding that it would not have been insider trading: “Selling the stock to comply with ethical obligations is not insider trading, as was made clear in the Stop Trading on Congressional Knowledge Act of 2012 (“STOCK Act”), Pub. L. 112–105, 126 Stat. 291, 298 (2012).”

Remedy for failure to recuse.  Sometimes there is no ex post remedy for a judge’s failure to recuse.  Here, as I mentioned, the financial incentive favored Cisco, but it is also Cisco that is asking for vacatur.  Centripetal argued that the failure to recuse was  thus a harmless error.  In Liljeberg v. Health Servs. Acquisition Corp., 486 U.S. 847, 862 (1988), the Supreme Court highlighted three factors in considering whether failure to recuse was harmless:

(1) “the risk of injustice to the parties in the particular case”;

(2) “the risk that the denial of relief will produce injustice in other cases”; and

(3) “the risk of undermining the public’s confidence in the judicial process.”

Id. On appeal, the Federal Circuit suggested that all three factors weighed in favor of recusal.  The court noted that the statute is purposely designed to require recusal without proving any actual bias.

Making such a bias determination would require the sort of line drawing that the statute was designed to avoid. . . . The reason § 455(b)(4) establishes a bright-line rule and does not require a showing of prejudice is because of the great difficulty in establishing actual prejudice in any particular case.

Slip Op.  On remand, the case will be re-assigned and rolled-back to August 2020.  That will likely require a new trial in the case.

Note that Judge Morgan passed away in May 2022. He was 87 years old. RIP.

Fintiv: Dir. Vidal calls for Fewer Discretionary Denials of Inter Partes Review Petitions

Patent

by Dennis Crouch

When Congress passed the Inter Partes Review (IPR) provisions of the AIA, there was some concern that the USPTO might be overwhelmed with IPR petitions; that patentees might be abusively harassed by IPR petitions; or that IPR petitions might sometimes problematically interfere with ongoing litigation.  One solution offered by Congress was give the USPTO Director discretionary and unreviewable authority to grant or deny IPR petitions.  We know that the PTO Directors have then passed this authority down to the PTAB who decides the institution petitions.  More recently, under Dir. Iancu direction the PTAB developed a more formalized doctrinal process for denying IPR institution when ongoing parallel litigation is already well underway.  See, Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential).   Because IPR petitions often follow infringement allegations, Fintiv considerations have become a regular aspect of IPR institution. In general, the PTAB  has been considering the following factors:

  1. Is the district court litigation stayed or likely to be stayed if the IPR is granted;
  2. Has the district court set a trial date that is close-in-time to the IPR statutory deadline for a final written decision;
  3. Have the district court and the parties already made substantial investment in the district court proceeding;
  4. Are there substantial overlap between issues raised in the petition and those found in the district court proceeding;
  5. Are the parties to the IPR the same as those in the parallel litigation;
  6. Are there other circumstances that suggest the exercise of discretion in denying the petition — including consideration of the merits of the petition.

In a recent release, USPTO Director Vidal has released a set of interim procedures for the PTAB to follow that somewhat modify Fintiv–and particularly make it less likely that the PTAB will exercise discretionary denials.  New rules:

  1. No discretionary denial if the petition presents “compelling evidence of unpatentability.”
  2. No discretionary denial if the petitioner stipulates that it will not “pursue in a parallel proceeding the same grounds or any grounds that could have reasonably been raised before the PTAB.”  (Can the stipulation be conditional upon the grant of the petition?).
  3. Fintiv precedent does not apply to USITC proceedings.
  4. Some courts regularly set early trial dates and then repeatedly push them back. And, it seems that at least one judge (Judge Albright) has been strategically setting early trial dates in order to trigger discretionary denial. With that in mind, the PTAB’s consideration of trial dates should consider the median time to trial for the district and potentially other aspects of the litigation rather than simply the particular trial date set by the district court.

Read the memo here.

As you can see, the substantive changes all weigh against discretionary denials.  The memo and other sideline discussions also make clear that  the new boss (Dir. Vidal) does not favor discretionary denials.  I.e., in addition to new rules, we are also likely to have a different narrowing interpretation of the denial approach.

Design Patent: Invalid as Unduly Functional

Patent, ,

by Dennis Crouch

Golden Eye Media USA v. Evo Lifestyle Products (Fed. Cir. 2022) (nonprecedential).

Evo’s design patent claims an “ornamental design for a foldable bag” as shown in the figures above.  This style of bag is known as a “trolly bag” in the UK and is used in shopping carts (trollies) to maintain order in reusable fashion.

After receiving a threat letter, Golden Eye filed a declaratory judgment action and won on summary judgment. In particular, the S.D.Ca. district court held the patent invalid as both functional and obvious; and also not infringed.

Functionality: Design patents focus on ornamentality rather than utility.  But, this divide quicky become confusing. Although the design must be ornamental, it is simultaneously a “design for an article of manufacture.” I.e., typically a design for a useful item.  The Federal Circuit has attempted to police this divide in a number of cases — trying to discern whether the design is unduly functional (and thus unpatentable as an ornamental design). Certainly, a design falls on the unduly functional side if its patent excludes all possible forms of the article of manufacture in question.  A step further, the court has concluded that a design “dictated by the utilitarian purpose of the article” is not protectable by a design patent. High Point Design LLC v. Buyer’s Direct, Inc., 730 F.3d 1301 (Fed. Cir. 2013).   In several cases, the court has recited a list of additional factors to consider:

  • Does the patent cover the “best design;”
  • Would alternative designs adversely affect the article’s utility;
  • Are there parallel utility patents;
  • Does the advertising tout features as having utility;
  • Are there any elements that are clearly ornamental – i.e., “clearly not dictated by function.”

See Berry Sterling Corp. v. Pescor Plastics, Inc., 122 F.3d 1452 (Fed. Cir. 1997).  Although functionality is a question of fact, the Federal Circuit affirmed that summary judgment was appropriate — finding “no issues of material fact precluding summary judgment.”

Of these factors, the most important appears to be the availability of alternative designs.  The quirk with that key factor is that the burden will be placed on the patentee to present those alternative designs even though the patent is presumed valid.

Obviousness: The court also affirmed on obviousness grounds — finding that an Irish patent filing by Trolly Cart founder (Doyle) created the same overall impression and that the only real difference in cloth handle length that was shown in other prior art bags.

Again, the appellate panel found that summary judgment of obviousness was appropriate. Obviousness is a question of law based upon underlying factual conclusions and summary judgment is appropriate when “the content of the prior art, the scope of the patent claim, and the level of ordinary skill in the art are not in material dispute.”

 

 

Decision on American Axle Within the Week

Patent

by Dennis Crouch

The country is awaiting big non-patent cases from the U.S. Supreme Court that we expect sometime over the next week or so.  Most notably is the abortion case of Dobbs v. Jackson Women’s Health Org.  No patent decisions are expected, but the Court will consider whether to grant certiorari in the lingering eligibility petition in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al., No. 20-891.  The American Axle received strong support from various amici filings, including an important recent brief from the US Solicitor General arguing that courts are now excluding inventions that have previously been at the core of eligibility. I look for an order granting or denying certiorari on June 27, 2022. Other pending petitions also ask the same or similar eligibility questions, including: Worlds Inc. v. Activision Blizzard Inc.;  and Spireon, Inc. v. Procon Analytics, LLC.  Over the past two years, the Court has been denying parallel pending eligibility petitions rather than holding them for resolution–suggesting to me that interest is not extremely high.

Animated Design Patents

Patent

Guest Post by Sarah Burstein, Professor of Law at the University of Oklahoma College of Law

Wepay Global Payments LLC v. PNC Bank, N.A. (W.D.Pa. June 1, 2022) [wepayDecision]

Companies associated with William Grecia have filed over a dozen cases alleging infringement of design patents for “animated graphical user interfaces.” A judge in one of those cases, Wepay v. PNC Bank, recently issued a decision dismissing the case.

The patent asserted in that case, U.S. Patent No. D930,702, was issued in 2021 and claims a “design for a display screen portion with animated graphical user interface.” Wepay alleges infringement of the second embodiment, which includes three images:

Consistent with the USPTO’s rules for “changeable computer generated icons,” see MPEP § 1504.01(a)(IV), the patent specifies that, “[i]n the second embodiment, the appearance of the     sequentially transitions between the images shown in FIGS . 3 through 5. The process or period in which one image transitions to another image forms no part of the claimed design.” Consistent with the USPTO’s general drawing rules, the patent disclaims all matter shown in broken lines “form[] no part of the claimed design.”

So what does this patent cover? According to the court, Wepay seemed to think its patent covered any app with a QR code that lets you send money to other people:

WPG maintains that both its patent and the PNC app include an icon array of three squares that simulate a QR code; both cycle to a functional screen where the user may choose to whom the money will be sent; and both conclude with the display screen with a display of a zero value, where the user may input the amount of money that the user wishes to send.

The court rejected that interpretation—and rightly so. It’s well-established that design patents cover the visual designs that are actually claimed, not the larger design concepts.

The court held that the claimed designs and accused design, shown below as shown in the complaint, were plainly dissimilar and granted PNC’s motion to dismiss.

In doing so, the court recognized that placement and proportion matter in design, noting that “[a]ny similarity between the two designs is limited to basic geometric shapes, but with notable differences in shape size and spacing such that no ordinary observer would mistake the Accused Design with the Asserted Design or vice versa.”

Some may argue that the court erred in considering the placement and proportion of the claimed design fragments, because matter shown in dotted lines “forms no part of the claimed design.” But even if other visual portions of the design are disclaimed, that doesn’t mean courts have to treat the claimed portions as free-floating motifs. (Indeed, sophisticated design patent owner Nike has recognized that placement matters, even when dotted lines are used. See this PTAB decision at 10-13.)

I’ve explained here, placement and proportion are essential elements of design. The differences between the claimed and accused designs here are an excellent example of how different a single motif (e.g., each of the three squares in figure 3 and in the accused design) can look in the context of the design, depending on its proportion to the other elements and where it is located on the screen.

Before diving into the merits, however, the court expressed some doubt over whether infringement was even possible in this case:

[T]he Court notes that the ordinary observer test focuses on a hypothetical purchaser induced to buy a product with an accused design over an asserted design. The cases cited by the parties likewise address designs where there exists a consumer and/or purchaser at play. However, neither the cited cases nor this Court’s research reveals a case where, like the instant matter, the consumer has not voluntarily chosen the design at issue. Instead, the Accused Design is incidental to the PNC customers utilization of the mobile application. The Complaint does not allege that a purchaser would have been or has been involved with the Accused Design. Further, the Complaint does not allege a purchase or transaction by a consumer with regard to the Accused Design over the Asserted Design. Thus, the ordinary observer test would seem not to fit squarely with the designs at issue, and WPG would not be able to assert a design patent infringement claim.

Even though it’s dicta, the court’s suggestion that a design patent owner must plead “a purchase or transaction by a consumer with regard to the Accused Design over the Asserted Design” is worth further discussion.

Like other patents, a design patent is infringed when someone makes, uses, sells, offers to sell, or imports the patented invention without permission. The test for design patent infringement doesn’t change that. It just tells us when someone is making, using, selling, offering to sell, or importing the patented design.

The test for design patent infringement is a test of visual similarity. The “ordinary observer” part just tells us how similar the designs must be. (See this article at page 177.)

So, under current law, no sale is required, let alone—as the court seems to suggest—a direct sale to the end user, “with regard to the Accused Design over the Asserted Design.” Indeed, because there is no working requirement for design patents, there may not be a product embodying the claimed design available for sale.

All the defendant has to do is make (or sell, etc.) a product that looks “the same” as the claimed design. (For more on how the test for design patent infringement works, see this essay or Chapter 12 of this free casebook.)

Because Grecia-related companies have filed so many similar cases, it seems likely this decision will be appealed. It is definitely one to watch.

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:

Who Escapes Texas? And Where Do They Go? Mandamus Petitioners and Transferee Courts in Patent Venue Disputes

Patent,

By Paul R. Gugliuzza, Temple University Beasley School of Law; Jonas Anderson, American University Washington College of Law; and Jason Rantanen, University of Iowa College of Law. This is the second in a new series on venue transfer requests and mandamus at the Federal Circuit.

Litigants shouldn’t get to choose the judge who decides their case. To us, that seems like an uncontroversial proposition. The ability to “judge shop” is the primary reason patentees once flocked to the Marshall Division of the Eastern District of Texas to file their infringement suits and are now flocking to the Waco Division of the Western District of Texas, where they’re guaranteed to have their case assigned to Judge Alan Albright. Judge shopping, we’ve argued elsewhere, raises concerns about court bias and capture and can make litigation unnecessarily costly and inefficient.

Numerous scholars, members of Congress, and even the Chief Justice have raised concerns about judge shopping, with a particular eye toward patent cases. Likewise, the Federal Circuit has indicated skepticism about the rapid accumulation of patent suits in Waco. In the past two years, the court has used the extraordinary writ of mandamus to order over twenty patent cases filed in Waco to be transferred elsewhere under 28 U.S.C. § 1404(a), which permits transfer “[f]or the convenience of parties and witnesses, in the interest of justice.” (Over the same time period, the Federal Circuit granted only two § 1404(a) mandamus petitions arising from any other court, both from the Eastern District of Texas.)

Though we think the harms caused by a party being able to choose its own judge are clear and indisputable, there is a counternarrative. It goes something like this: the Federal Circuit is polluted with “anti-patent sentiment.” It is captured by the big tech companies that are the most frequent targets of infringement suits—Apple, Google, and the like. And the Federal Circuit is thwarting patentees (and innovation) by sending infringement cases away from patentees’ chosen courts in Texas to places that are friendlier to defendants, such as the Northern District of California.

Fortunately, data we have collected as part of our comprehensive empirical study of mandamus practice at the Federal Circuit can help us assess whether, when it comes to questions about patent venue, the Federal Circuit is really in the pocket of big tech.

First off, it is true that mandamus petitions seeking transfer from Texas to the Northern District of California are more likely to be granted than petitions seeking transfer to other districts. As the table below shows, from 2008 through 2021, the Federal Circuit granted 32.0% of mandamus petitions seeking to overturn a district court decision denying transfer from the Eastern District of Texas to the Northern District of California as compared to 25.6% of petitions seeking transfer from the Eastern District of Texas to any district besides the Northern District of California. Likewise, the Federal Circuit granted 63.2% of mandamus petitions seeking to overturn a district court decision denying transfer from the Western District of Texas to the Northern District of California as compared to 46.2% of petitions seeking transfer from the Western District of Texas to any district besides the Northern District of California.Overall, mandamus petitions seeking to overturn a district court decision denying transfer from either Texas district to the Northern District of California were granted 45.5% of the time, while petitions seeking transfer from either Texas district to any district besides the Northern District of California were granted only 30.8% of the time.

To be clear, this disparity in grant rates among transferee courts doesn’t establish that the Federal Circuit unduly favors Silicon Valley-based tech companies. Rather, it may be that cases filed against those companies in Texas present particularly strong cases for transfer given that the defendants’ offices, employees, documents, and R&D facilities tend to be located in California. Regardless, the data does make clear that a mandamus petition seeking transfer from Texas to the Northern District of California is nearly 40% more likely to be granted than a petition seeking transfer from Texas to any other district.

To better gauge big tech’s success at the Federal Circuit, we can also look at the grant rates for individual mandamus petitioners. We found these results, frankly, a little surprising. First of all, there are not as many repeat petitioners as one might think. In total, from 2008 through 2021, roughly 185 individual parties joined one or more petitions for a writ of mandamus seeking to overturn a decision by the Eastern or Western District of Texas denying transfer under § 1404(a). (For the purpose of this analysis, we combined obviously related corporate entities, such as Samsung Electronics and Samsung Electronics America. Also, because many petitions are joined by multiple parties, the total number of petitioners is much larger than the number of Federal Circuit decisions.)

The most frequent petitioner in our dataset is Apple, which filed 16 petitions over the 14 years covered by our study. The Federal Circuit granted 4 of those petitions. The most successful petitioner of note is Google, which prevailed on 4 of its 6 petitions. But those numbers are small, making it hard to draw definitive conclusions.

The table below shows the results of Federal Circuit mandamus decisions in which the Eastern or Western District of Texas denied transfer under § 1404(a), limited to petitioners who appeared in three or more decisions from 2008 through 2021.As indicated on the first table above, the overall grant rate for Federal Circuit mandamus petitions challenging denials of § 1404(a) transfer motions by the Eastern or Western District of Texas is 37.5%, so these frequent petitioners do about average. (Though of course the mandamus grant rates in cases out of the Eastern and Western Districts of Texas are much higher than in cases filed elsewhere.)

If we added the Federal Circuit’s mandamus decisions from 2022 (after we closed the dataset for our study at the end of 2021), the numbers would change somewhat. Apple is 2-0 this year, which ups its grant rate to 33.3%. Google also won its only petition in 2022, bumping its grant rate up even higher, to 71.4%. Samsung likewise is 1-0 this year, so its rate is now 50%. Still, we would hesitate to say that any of this establishes that the Federal Circuit is biased against patentees and in thrall to big tech.

To be sure, the world’s richest corporations, like Apple and Google, enjoy massive advantages any time they litigate; the notion that we have an impartial court system indifferent to litigants’ economic power is fanciful. But it’s also specious to claim that the Federal Circuit’s mandamus practice indicates court capture by big tech. More likely, the Federal Circuit is using the imperfect tools at its disposal to fix a real problem: the questionable incentives for both judges and litigants in a system where the party filing a case gets to choose its judge.

U Mass v L’Oréal: Avoiding indefiniteness through claim construction

Patent,

By Jason Rantanen

University of Massachusetts, Carmel Laboratories, LLC v. L’Oréal, S.A., L’Oréal USA, Inc. (Fed. Cir. 2022) – opinion

Panel: Prost, Mayer, Taranto (author)

This opinion nominally addressing indefiniteness illustrates the power of de novo claim construction review at the Federal Circuit. UMass’s claimed invention is a topical skin care product containing adenosine that is applied to the skin. The district court concluded that the claim was indefinite, but on appeal the Federal Circuit negated the indefiniteness determination by adopting the claim construction proposed by L’Oréal – a victory for sorts of UMass but, based on the briefs, not the outcome it was looking for.

The difficulty in this case arose from the combination of the structure of the skin and the wording that UMass used to claim the invention. Starting with the skin structure, the relevant parts basically look like this:

Figure 1: “Artist”‘s representation of skin layers

Representative claim 1 of patent number 6,645,513 reads:

A method for enhancing the condition of unbroken skin of a mammal by reducing one or more of wrinkling, roughness, dryness, or laxity of the skin, without increasing dermal cell proliferation, the method comprising [1] topically applying to the skin a composition comprising a concentration of adenosine in [2] an amount effective to enhance the condition of the skin without increasing dermal cell proliferation, [3] wherein the adenosine concentration applied to the dermal cells is 10-3 M to 10-7 M.

(bracketed numbers and emphasis added).

Apparently seeking to avoid a noninfringement outcome, UMass argued that the “wherein” clause [3] referred to the concentration of adenosine that seeped into the dermis rather than the concentration of the product applied to the skin. But since  clause [1] and [3] thus referred to different concentrations, the result was an ambiguity in the meaning of composition clause [1] and “effective” clause [2]: what is a “concentration of adenosine in an amount effective to enhance the condition of the skin”?  Relying on the subjective determination precedent, the district court concluded that this phrase was indefinite: “Indeed, the determination of whether a person’s skin is enhanced provides a paradigmatic example of indefiniteness. Beauty, after all, is “in the eyes of the beholder.”” University of Massachusetts v. L’Oréal USA, Inc., 534 F. Supp. 3d 349 (D. Del. 2021). UMass appealed the indefiniteness determination, trying to thread the needle between a limiting claim construction and an indefiniteness outcome. L’Oréal both responded on the indefiniteness point and advanced its own claim construction argument.

The Federal Circuit could plausibly have affirmed on indefiniteness in my non-judicial opinion. However, instead the Federal Circuit focused on claim construction, walking through its standard claim construction analysis and concluding that clause [3] actually referred to the concentration of adenosine in the product applied to the skin, not the resultant concentration in the dermis. Because this removed a necessary predicate of the district court’s indefiniteness determination, the consequence was a remand to the district court for further proceedings.

The Federal Circuit first concluded that the claim itself was ambiguous about what clause [3] referred to: “We first conclude that the relevant claim language, es-pecially when viewed in the context of the whole claim, is not plain on its face, much less plain in supporting UMass’s interpretation of it.” Slip Op. at 8. The opinion spends several pages discussing this; worthwhile reading if you are making a text-based argument, but too much depth to go into in a blog post.

The next step in claim construction is to look at the specification. This didn’t provide much support for UMass’s claim construction position, however: “UMass has not shown that, even in this context, the specification makes clear that the inventors contemplated measuring the adenosine concentration after exposure to the cells, rather than in a solution before application to the cells.” Id. at 12.

The last step of the intrinsic evidence analysis, however, did produce a clear outcome to the court.  “Even more strongly than the specification, the prosecution histories of the patents in question resolve the ambiguity surrounding the meaning of “the adenosine concentration applied to the dermal cells” in the wherein clause.” Id.  The Federal Circuit concluded:

The amendments and comments clearly convey that UMass was continuing the pre-amendment reliance on the concentration in the composition before application to the skin, rather than introducing a materially different, unexplained notion of concentration, no longer assessed before contact with the object of application. UMass’s proposed construction now cannot fairly be squared with the understanding that both it and the examiner expressed during prosecution, and on which skilled artisans are entitled to rely.

Id. at 14. Because the use of the prosecution history was to resolve a lingering ambiguity in the claim language, this was not a case where the “clear and unmistakable disclaimer” standard applied for overcoming an otherwise plain meaning of the claim.

Opinions Without Law: Federal Circuit Mandamus Decisions on Transfer of Venue

Patent

Guest post by Paul R. Gugliuzza, Temple University Beasley School of Law; Jonas Anderson, American University Washington College of Law; and Jason Rantanen, University of Iowa College of Law.

We’ve written here a few times about how the parties seeking Federal Circuit review use the writ of mandamus to get around the usual rule that only final, case-ending judgments can be appealed. The primary conclusion of our research (which will appear in the Washington University Law Review later this year) is that, though the Federal Circuit grants mandamus far more frequently than any other federal court of appeals, the Federal Circuit’s high grant rate is driven almost entirely by mandamus petitions in patent infringement cases out of the Eastern and Western Districts of Texas that raise questions about transfer of venue for convenience reasons under 28 U.S.C. § 1404(a).

For example, from late 2020 through the end of 2021, the Federal Circuit decided 34 mandamus petitions challenging § 1404(a) transfer decisions by Judge Alan Albright of the Western District of Texas, who now hears more patent cases than any other judge in the country. The Federal Circuit granted twenty of those petitions, or 58.9%. Overall, from 2008 through 2021, the Federal Circuit granted 37.3% of mandamus petitions out of the Eastern and Western Districts of Texas on § 1404(a) issues (38 of 102). Outside of § 1404(a) petitions from those two district courts, however, the Federal Circuit’s mandamus grant rate (on all issues, from all lower tribunals) was only 9.9% (30 of 304).

With the Federal Circuit issuing so many mandamus decisions on transfer of venue, one might presume that the law governing the standard for obtaining mandamus relief, as well as for evaluating transfer motions under § 1404(a), is robust and well-developed.

But that is far from true.

As an empirical matter, the Federal Circuit designated only 4 of the 34 recent mandamus decisions reviewing Judge Albright as precedential. And all 4 were grants. So not only is the quantity of precedential case law small, it’s not representative of overall results.

In fact, from 2008 through 2021, the Federal Circuit issued only 19 precedential decisions on § 1404(a) transfer out of 128 total decisions. And the precedential decisions disproportionately granted mandamus: 15 grants, only 4 denials. By comparison, in nonprecedential mandamus decisions, the grant rate was substantially lower: 26 grants, 83 denials. The figure below puts the unrepresentative nature of the Federal Circuit’s precedential § 1404(a) mandamus orders in stark relief.

Figure 1: Decision form for petitions for writs of mandamus at the Federal Circuit, 2008-2021This data raises the question: Does the lack of precedent and the skewed nature of the outcomes in it matter? Even if every Federal Circuit § 1404(a) mandamus decision were treated as binding precedent, the fact-intensive and case-specific nature of the § 1404(a) inquiry arguably permits a judge (whether a district judge or a Federal Circuit judge deciding a mandamus petition) to justify almost any outcome in a given case. Moreover, as a matter of Federal Circuit choice-of-law doctrine, transfer of venue issues that arise in patent cases, as well as the standard for obtaining the extraordinary writ of mandamus, aren’t even governed by Federal Circuit precedent—they’re governed by the precedent of the regional circuit from which the case arises.

Nevertheless, we think there are at least three reasons to be concerned about the current state of appellate precedent on mandamus and convenience transfer in patent cases.

First, it is strange that there is so little binding law on such important issues. In the regional circuits, mandamus decisions on transfer of venue are almost nonexistent. (From 2019 through 2021, there was only one, total.) And the same goes for mandamus more generally: as we report in more detail in our article, over the past three years, the Federal Circuit has granted roughly the same number of mandamus petitions (24) as every other federal court of appeals combined. Yet none of this Federal Circuit case law is “law” in the way lawyers usually think about appellate decisions that are labeled as “precedential.”

Second, the lack of binding precedent on venue-related mandamus illustrates the problematic nature of the Federal Circuit’s choice-of-law rules more generally, under which some legal issues that frequently arise in patent cases are not governed by the (often ample) Federal Circuit precedent on the issue. Other notable issues, in addition to venue and mandamus, that are not actually governed by Federal Circuit decisional law include: the standard for pleading a claim of patent infringement, the criteria for granting injunctive relief for patent infringement, and the substantive standards governing claims in other areas of federal IP law, such as copyright and trade secrets. (For a thoughtful critique of the entire concept of “circuit law,” see Tommy Bennett’s forthcoming article, There Is No Such Thing As Circuit Law.)

Finally, the Federal Circuit’s venue-related mandamus precedent (or, the lack thereof) provides another example of how the Federal Circuit’s decisions about whether to designate a ruling as precedential or nonprecedential can distort perceptions about what the court is really doing. For instance, as one of us showed in a prior study with Mark Lemley, the Federal Circuit upholds the validity of a patent over a challenge on patentable subject matter grounds about 20% of the time when it decides the case in a precedential opinion. In nonprecedential opinions and summary affirmances under Federal Circuit Rule 36, however, the court upholds the validity of a patent challenged as lacking patentable subject matter less than 2% of the time. Similarly, on § 1404(a) mandamus petitions, a review of precedential decisions makes it look like over three-quarters of them are granted. But, in reality, the grant rate is less than one-third.

What should be done to alleviate these concerns? For starters, the Federal Circuit should reconsider its needlessly complex, unpredictable—and arguably meaningless—choice of law regime. (We tend to think that most lawyers and judges treat the Federal Circuit’s § 1404(a) mandamus decisions as binding, even if they are not as a matter of formal doctrine.) Instead, the Federal Circuit should simply apply its own precedent to all federal issues that arise in patent cases. In addition, the Federal Circuit could be more conscientious when deciding whether to designate mandamus decisions as precedential, making sure that its precedential rulings are more representative of the population of mandamus decisions as a whole. More fundamentally, we might question whether the precedential/nonprecedential distinction continues to make sense in an age where the internet makes it easy to access the vast majority of federal appellate decisions (though certainly not all of them).

Fees for Delay

Patent

The typical office action rejection comes with a three month timeline, extendible  for another three months with payment of a fee. The fee escalates for each month of delay.

  • $220 – One Month Delay
  • $640 – Two Months Delay
  • $1,480 – Three Months Delay

After three months, the case is deemed abandoned and can only be revived based upon exceptional circumstances.

Here is my question: How do you decide who pays the fees?

Delegating Authority

Patent

CustomPlay, LLC v. Amazon.com, Inc. (Supreme Court 2022)

New challenge to inter partes review. In this case, the patentee argues: (1) anti-delegation and (2) due process. Questions:

  1. Whether the Patent and Trademark Office (PTO) violated the statutory text and legislative intent of the America Invents Act (AIA) by delegating the PTO Director’s responsibility to determine whether to institute inter partes review (IPR) of issued patents to the Patent Trial and Appeal Board (PTAB), which is the entity that the AIA directs to render final decisions in instituted proceedings.
  2. Whether the PTO’s administration of IPR proceedings violates a patent owner’s constitutional right to due process by having the same decisionmaker, the PTAB, render both the institution decision and the final decision.

On question 1, remember that the statutory language calls for the USPTO “Director” to decide whether to institute an IPR, and then for the “Patent Trial and Appeal Board” to actually conduct the review.  35 U.S.C. 314, 316.  But, in its rulemaking, the USPTO gave authority to the PTAB to both institute and review.

https://www.supremecourt.gov/DocketPDF/21/21-1527/225545/20220516181434359_21-Petition.pdf

 

The Manner in Which the Invention was Made

Patent,

by Dennis Crouch

T0day’s oral arguments in Thaler v. Vidal was not too exciting. Court focused on the terms “individual” that was added to the Patent Act during the AIA and likely determinatively ends the case:

The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.

35 U.S.C. s100(f).  I am close to 100% sure that the Federal Circuit will affirm that US law requires the patentee to identify a human inventor.

= = =

In the course of oral arguments, the government made two odd claims, neither of which were fully developed.

The first relates to the final sentence of Section 103 indicating that “patentability shall not be negated by the manner in which the invention was made.”  The Gov’t . made the following claim:

The Supreme Court in Graham against John Deere [more than] 50 years ago said that provision, that one sentence, applies only to the part of patentability that is referenced in Section 103.

Thaler Oral Arguments. In Graham, the Court did comment on the phrase and its  Congressionally intended purpose of overruling the flash-of-genius test.  However, I don’t see that the court bound the phrase to only be tied to Section 103 and obviousness.  The court wrote:

It also seems apparent that Congress intended by the last sentence of § 103 to abolish the test it believed this Court announced in the controversial phrase “flash of creative genius,” used in Cuno Engineering Corp. v. Automatic Devices Corp., 314 U. S. 84 (1941).

Graham v. John Deere Co., 383 U.S. 1 (1966).  Although the Graham court found a seemingly apparent Congressional intent, it did not actually interpret the provision as so limited and certainly did not indicate that it should be limited to application only in the context of obviousness analysis.

The second odd claim made by the gov’t in oral arguments is as follows: “One person’s innovation is another person’s step backwards.”  The basic underlying idea  here is apparently that Congress intended to intentionally exclude certain AI-generated inventions from patentability because they thought those innovations would have a negative societal impact.

The full oral arguments should be available shortly at this link: https://cafc.uscourts.gov/home/oral-argument/listen-to-oral-arguments/.

I am the smart one: Sideshow Patent Litigation

Patent

Tod Tumey v. Mycroft AI (8th Cir. 2022)

Tod Tumey is a Houston-based patent attorney who represents Voice Tech Corp.  Back in 2021, VoiceTech sued Mycroft for patent infringement.  The PTO has apparently determined that the asserted claims are not patentable, but that case will be appealed to the Federal Circuit.

Meanwhile, Mycroft allegedly began to a series of “cyberattacks and harassment activity” against Tumey (including hacking attempts and heavy-breathing phone calls).  It is clear that Mycroft repeatedly announced that it was fighting VoiceTech as a patent troll and that Mycroft has a strong anti-troll position:

I don’t like letting these matters go quietly. In my experience, it’s better to be aggressive and ‘stab, shoot and hang’ them, then dissolve them in acid. Or simply nuke them from orbit, it is the only way to be sure.

Troll Hunter—Mycroft’s Position on Patent Trolls (February 5, 2020).

Tumey sued Mycroft as well as Mycroft founder Joshua Montgomery and CEO Michael Lewis on several causes of action: 

  • Racketeering. 18 U.S.C. §§ 1962(c) & 1962(d);
  • Hacking. 18 U.S.C. § 1030;
  • Privacy violations. 18 U.S.C. § 2701; and
  • Additional state and federal claims.

Tumey’s case is pending in the Western District of Missouri (KC).  The lawsuit was originally handled by Judge Ketchmark, but as you’ll read below, the 8th Circuit  recently ordered the case to be reassigned to a different judge. W.D.Mo. Chief Judge Beth Phillips has taken-up the case.

In the case, Tumey requested a preliminary injunction order that Mycroft and its people cease its incitement of cyber-attacks, phishing, and harassing phone calls.  Mycroft responded with sworn declarations promising that no one associated with Mycroft was involved in the cyber-attacks or harassment.  Still, the original district court granted a preliminary injunction barring Mycroft and its people from:

  1. Engaging in, participating in, or recklessly or intentionally inciting any cyberattacks, hacking or other harassment directed at Plaintiffs, including Plaintiffs’ officers, agents, servants, employees, attorneys, witnesses and potential witnesses (including Chilton Webb and Christina Butler), and the family members of any of the foregoing (the “Protected Parties”); and
  2. Using or disclosing any documents, information, or other materials of any kind obtained from Plaintiffs or any other Protected Party through any unauthorized means.

On appeal, the 8th Circuit vacated the decision finding due process violations (briefing was related to 14-day TRO, but the judge transformed the hearing into a preliminary injunction hearing with only 1-hour notice); and merits problems (“there is a paucity of evidence in this record to find that Mycroft is behind the attacks”).  The appellate panel also concluded that the case should be reassigned to a different judge “[b]ecause a reasonable person aware of all the circumstances and events that have transpired so far would harbor doubts about the judge’s impartiality, reassignment to a different judge is appropriate.”  In particular, the appellate court suggested that “an objective review of the record demonstrates a degree of antagonism against Mycroft that is higher than that being applied against Tumey.”

After the district court allowed Tumey, over Mycroft’s strenuous objection, to transform his motion for a temporary restraining order to a preliminary injunction on one hour’s notice, the court further fanned the flames during the hearing by sua sponte restricting Mycroft’s access to evidence, or lack thereof, connecting Mycroft to the unlawful conduct that took place. Again, over Mycroft’s objection, the court allowed testimony about the disputes between neighbors in Hawaii when the relevance, if any, of this testimony to the current litigation is marginal and tangential. The preliminary injunction that was ultimately issued went beyond the intended use of maintaining the status quo until the claims can be resolved. When Mycroft sought reconsideration of the preliminary injunction, specifically raising claims regarding the breadth and restraint on speech and publication, the court dismissed, without analysis, Mycroft’s constitutional claims.

Slip Op.  On remand, the new district court is considering the defendants summary judgment motion that is currently being briefed.

Meanwhile, Mycroft’s founder Montgomery has sued Tumey in Hawaii alleging tortious abuse of process, conspiracy to extort, defamation, and intentional infliction of emotional distress. “Defendants’ misrepresentations and abuse of the legal and judicial systems intentionally and/or negligently caused Maj. Montgomery severe emotional distress.”  The lawsuit more interesting once we bring in Mongomery’s Hawaii next-door-neighbor, Christina Butler. After a handful of negative encounters with Mongomery, Butler located the pending Tumey lawsuit and offered to testify in support of Tumey’s case “believing she possessed bad character evidence about Montgomery that would discredit Montgomery.”  Mongomery’s Hawaii lawsuit includes Butler as a defendant and alleges:

First, Defendant Butler provided a photo of Maj. Montgomery attached to a sworn affidavit claiming that Maj. Montgomery was attempting to evade service. Then, Defendant Tumey requested and Defendant Butler provided another sworn affidavit claiming Maj. Montgomery committed criminal property damage by purposefully damaging her main water line the night after her initial affidavit was filed. Moreover, Defendant Butler claimed Maj. Montgomery was responsible for “drone harassment” and trespass, without providing a single piece of evidence to support her allegations.

Montgomery complaint.  That case is pending in Hawaii state court.

[quote source]

Thaler v Vidal: Oral Arguments on Monday

Patent,

By Jason Rantanen

On Monday, June 6, the Federal Circuit will hear oral arguments in Thaler v. Vidal,  covered on PatentlyO here.  Dr. Thaler  claims that his AI system, DABUS, has invented a new technology and should be named as its inventor on the patent. Although access to the Federal Courts Building remains restricted, you can listen to the arguments live at https://cafc.uscourts.gov/home/oral-argument/listen-to-oral-arguments/. The court’s long had a practice posting recordings of oral arguments, but it’s great that they’re also making the audio available in real time.

If you’re interested in more context, students in Professor Colleen Chien’s, AI and the Law class wrote a series of blog posts covering the issue, including a post on Dr. Thaler’s legal arguments, a post on the DABUS technology, patents and patent applications, and the results of a small survey of patent prosecutors on AI in their fields.

Read more at Santa Clara’s AI and the Law for Social Impact and Equity blog!

The Spirit of Lehman Brothers

Patent

by Dennis Crouch

Tiger Lily Ventures Ltd v. Barclays Capital Inc. (Fed. Cir. 2022)

LEHMAN BROTHERS has a bad name for triggering the US economic collapse in the mid 2000s.  But, as they say ‘any publicity is good publicity.’

Barclays purchases a number of Lehman Brothers businesses and accompanying goodwill back in 2008 as part of the bankruptcy proceedings.  That exchange included ownership rights of the LEHMAN BROTHERS trademarks.   But, Barclays was not using the marks and allowed their registration to expire.

At that point Tiger Lily entered the stage and applied to register the LEHMAN BROTHERS mark for its use its whisky. The spirit of the Lehman Brothers.  Barclays opposed the whisky registration and also applied to re-register its mark.  The TTAB agreed with Barclays holding particularly that (1) Barclays had not abandoned its common law mark; (2) there is a likelihood of confusion between the marks; and (3) Barclays provided sufficient evidence that it has a good faith intent to eventually begin using the mark again.

With regard to likelihood of confusion, the TTAB pointed particularly to the fact that lots of LEHMAN BROTHERS branded collectable items (including some alcohol) are still being traded by collectors–its like the new Nazi paraphernalia?  This collector  conclusion raises a number of interesting questions about the role of trademarks. Even if this is a good theory, I would suggest that collectors are among the most sophisticated buyers, always on the lookout for counterfeits and so would require a fairly high level of confusion.

On appeal, the Federal Circuit has affirmed — The Whisky mark is cancelled, and Barclay’s mark remains.

It is clear here that whisky registration was seeking to free-ride upon consumer recognition of the Lehman Brothers name.  But, Tiger Lilly suggests that its case here is different because it is lampooning Lehman Brothers.  It is not trading on the “goodwill” but rather the “bad will.”  On appeal, the Federal Circuit rejected this claim — finding “no legal support for these subtle distinctions.”  Rather, “Tiger Lily’s attempts to capitalize on the fame of the LEHMAN BROTHERS mark  weighs in favor of finding a likelihood of confusion.”

The court’s other important ruling in the case focuses on the expectation that owners of trademarks will extend their use of the mark into other fields.

[I]n modern consumer markets commercial trademarks are often licensed for use on products that may differ from the original source of the trademark. . . . As a legal principle, because the LEHMAN BROTHERS mark has achieved a high degree of fame, it is afforded a broad scope of protection. Our precedent makes clear that a famous mark “casts a long shadow which competitors must avoid.”

Slip Op.

 

 

Supreme Court Continues Preliminary Injunction of HB20 – with dissent

Patent,

by Dennis Crouch

NetChoice, LLC v. Paxton, 21A720, 596 U.S. ___, 2022 WL 1743668 (U.S. May 31, 2022)

The most recent news in this case is that a 5-4 Supreme Court has sided against Texas–issuing an emergency order to reinstitute the preliminary injunction against enforcement of the Social Media Censorship law known as HB20.  The case is now back before the 5th Circuit who review the preliminary injunction order in a non-emergency fashion.

= = =

The State of Texas enacted HB20 to regulate large social media platforms (>50 million users).  The law has a number of reporting requirements and also prohibits large social media platforms from censoring users based upon  that user’s viewpoint viewpoint. Here, “censor” is broadly defined “to mean to block, ban, remove, deplatform, demonetize, de-boost, restrict, deny equal access or visibility to, or otherwise discriminate against expression.”

NetChoice is a lobbying organization controlled by large media companies, including Google, Facebook, TikTok, Amazon & Twitter.  Those companies argue that HB20 impinges upon their Constitutionally protected free speech rights.  In particular, the large social media platforms argue that the First Amendment protects their rights to operate as editors making publication decisions.

= = = =

The Supreme Court’s decision against Texas was issued without an opinion by a 5-judge majority of Chief Justice Roberts along with Justices Breyer, Sotomayor, Kavanaugh and Barrett.  Four justices dissented, including Justice Kagan who did so without any opinion. The only opinion then came from Justice Alito’s dissent that was joined by Justices Thomas and Gorsuch.  This sort of decision here is quite wonky — it is an emergency order to vacate the 5th Circuit’s order to temporarily stay the district court’s preliminary injunction.  Here, I want to just focus a bit on Justice Alito’s First Amendment suggestions, which he notes have not been finalized at this preliminary and emergency stage.

Justice Alito’s opinion identifies the first amendment issues at stake here to be important and novel. “It is not at all obvious how our existing precedents, which predate the age of the internet, should apply to large social media companies.”  Although editorial control is certainly within the First Amendment, the court has previously allowed requirements to be placed on broadcast and cable television and even a shopping center. See PruneYard Shopping Center v. Robins, 447 U. S. 74 (1980) and Turner Broadcasting System, Inc. v. FCC, 512 U. S. 622 (1994).

Next step in the case is for the 5th Circuit to decide whether to cancel the preliminary injunction.  I expect that the court will at least narrow the injunction if not entirely eliminate it.  At that point the case will move back down to the district court.  If Texas does begin enforcement then there will likely be a number of cases moving up through both State and Federal courts.

 

AI-Generated Invention at the Federal Circuit

Patent, , , ,

On Monday, June 6, the Federal Circuit will hear oral arguments in the pending  AI-inventorship case of Thaler v. Vidal, Appeal No 21-2347. The court does not release the identity of the individual judges until just before oral arguments, so all we (and the parties) know is that it is Panel A in Courtroom 201.

This case raises the novel legal issue of whether a patent can be obtained for an invention created by an artificial intelligence (AI) in the absence of a traditional human inventor (“AI-Generated Invention”). The United States Patent and Trademark Office (“USPTO”) and the District Court for the Eastern District of Virginia have barred such inventions from being patented. This ignores fundamental statutory and constitutional principles and also stymies innovation. While other countries are promoting the progress of science, the USPTO is belatedly adopting luddism.

Appellant’s brief.  In their responsive brief, the US narrowed the issue somewhat:

Whether the District Court correctly concluded that an artificial intelligence device comprised solely of source code cannot qualify as an “inventor” under the Patent Act, where the plain statutory language specifically defines “inventor” to be an “individual” and refers to an “inventor” using personal pronouns.

Appellee Brief.

That same panel is hearing two other IP cases:

  1. Samsung v. Dynamics, 21-2352.  PTAB sided with the patentee Dynamics.  On appeal, Samsung argues obviousness — that the Board failed to consider some aspects of the prior art and required motivation-to-combine be found in the primary reference.  Dynamics patents cover electronic emulation magnetic stripes (on, for instance credit cards).  The infringement argument is that Samsung’s digital wallet infringes. John O’Quinn (Kirkland Ellis) will argue for Samsung and Robert Morris (Eckert Seamans) for Dynamics.
  2.  In re A. Zeta S.R.L., 22-1178. Zeta is an Italian company seeking to register the mark PARMA COFFEE to be used for coffee, chocolate, tea, and other food/beverages.  Parma is a mid-sized city in Italy (200k people) and the goods in question apparently originate from Parma. The PTAB refused to register the mark — finding the COFFEE portion of the mark generic, and PARMA to be “Primarily Geographically Descriptive” under Section 2(e)(2) of the Lanham Act.  One issue here is about “origination” — the coffee is not grown in Parma but the PTO still argues that there is sufficient connection with the city (and also that Zeta waived that argument before the TTAB).  The parties waived oral arguments in the case and so it will be submitted on the briefs .

 

 

 

 

USPTO PPAC – Ready for Nominees

Patent

The Patent Public Advisory Committee (PPAC) forms a board of advisors for the USPTO Director. Nine members appointed by the Secretary of Commerce for three-year terms.  Although PPAC does not have formal power to take action, the USPTO Director is required to cooperate with the committee, provide it with access to information, and consider its advice.  Congress has declared that the committee should individuals representing both small and large entities, including at least independent inventor.  The committee should also include individuals “with substantial background and achievement in finance, management, labor relations, science, technology, and office automation.”

Dir. Vidal has announced that the USPTO is seeking nominations for three new  PPAC members. Due by July 1, 2022.  For more information, contact Cordelia Zecher, Acting Chief of Staff for Director Vidal at 571-272-8600.

My four issues for this year:

  1. Outreach and cultivate the US as a flourishing innovative society rather than one that relies upon others to provide answers. 
  2. Ensure that the USPTO maintains highest quality examination practices post-COVID. 
  3. Work to transform intellectual property laws in ways that promote US investment in innovation in key industries.
  4. Manage the balance between patents and trade secrecy protection–especially as more companies have substantially shifted toward trade secrets.

Submit your nominees here [USPTO Link Currently Not Working].