Tag Archives: priority

Small Jazz Musician Foils Apple Music Trademark Registration

Patent, , , , , , ,

by Dennis Crouch

Bertini v. Apple Inc., — F.4th — (Fed. Cir. 2023)

Apple Records was founded by The Beatles in 1968 and quickly became a success, producing many hit records in the late 1960s and early 1970s. Apple Computer Company was founded in the mid-1970s and almost immediately sued for trademark infringement by Apple Corps (the parent company of Apple Records).  The companies eventually settled the case with Apple Computer paying $80k and agreeing to stay out of the music business.  The companies clashed again in the 2000s as Apple Computer (now Apple Inc.) expanded into music via iTunes and other services.  The two eventually reached another settlement that transfers substantial rights over to Apple Inc. to use the mark in connection with its music-related products and services.

In 2015 Apple began using the mark APPLE MUSIC as its new music streaming service. It also filed to register a trademark on the mark.

Meanwhile, Charlie Bertini created his band AppleJazz Band back in 1984 to perform at the AppleJazz festival.  He also created the AppleJazz record label.  Bertini filed an opposition to Apple’s TM registration which the TTAB eventually dismissed.  On appeal here, however, the Federal Circuit has reversed — holding that Apple had not proven a sufficient right of priority.

Tacking: The basic issue in the case is whether Apple Inc. can claim priority use back to the founding of Apple Records in 1968 (or sometime before 1984). Of importance, the pre-84 use of Apple mark was solely for “gramophone records” and other record formats.  In its registration application, Apple is seeking to register APPLE MUSIC for “15 broad categories of services, from the production and distribution of sound recordings, to presenting live musical performances, to providing websites featuring entertainment and sports information.”  Slip Op.

On appeal, the Federal Circuit held that the tacking analysis must be pursued for each service listed its application.

The Board legally erred by permitting Apple to claim absolute priority for all of the services listed in its application based on a showing of priority for one service listed in the application. Tacking a mark for one good or service does not grant priority for every other good or service in the trademark application. A trademark owner must show tacking is available for each good or service for which it claims priority on that ground. . . . The trademark applicant cannot establish absolute priority for the full application simply by proving priority of use for a single service listed in the application.

Slip Op.  Here, Apple has not shown that taking is proper for live musical performances and therefore the application must be rejected.  On remand, Apple will likely be able to narrow its application to only services that are properly covered by its assignment from Apple Records.

In her analysis, Federal Circuit Chief Judge Moore repeatedly stated that tacking is an exception to the ordinary rule and should be narrowly construed.  American courts “uniformly apply the tacking doctrine narrowly.”  Although tacking allows for minor changes in services and in the mark itself, tacking requires “substantial identity.” “[G]oods or services must be substantially identical for tacking to apply.” Id.  In the context here, in order to have tacking for musical performances “Apple must therefore show live musical performances are substantially identical to gramophone records.” Although substantial identity is a question of fact, the Federal Circuit concluded that there was no need for the TTAB to determine this question — “no reasonable person could conclude … that gramophone records and live musical performances are substantially identical.”

Accordingly, Apple is not entitled to tack its use of APPLE MUSIC for live musical performances onto Apple Corps’ 1968 use of APPLE for gramophone records. Because Apple began using the mark APPLE MUSIC in 2015, Bertini has priority of use for APPLE JAZZ as to live musical performances. We therefore reverse the Board’s dismissal of Bertini’s opposition to Apple’s application to register APPLE MUSIC.

Id.

Note that Apple has substantially moved-on from this issue and redid its logo as shown below using a design-plus-word mark.

Multiple dependent claims, blaze marks, and ipsis verbis support

Patent, , , ,

By Chris Holman

University of Minnesota v. Gilead

This is a follow-up to Dennis’s post discussing a recent Federal Circuit decision, University of Minnesota v. Gilead, wherein the university was essentially precluded from claiming priority to a provisional patent application because the provisional failed to provide adequate written description support for a later claimed invention.

Note that a provisional patent application is not required to include any patent claims, since a provisional can never mature into an actual patent, but only serves to provide an earlier effective filing date for a later-filed non-provisional patent application, assuming certain requirements are satisfied. In this case, however, the university’s provisional application included 63 claims, 49 of which are directed toward “[a] compound of Formula I:

wherein: . . . .”

The bodies of the claims defines various possible substituents at the seven “R” positions.  Here are the claims filed in the provisional application.

Claim 1 is the only independent claim, defining a genus of astronomical proportions. As Judge Lourie puts it, “the listings of possibilities are so long, and so interwoven, that it is quite unclear how many compounds actually fall within the described genera and subgenera.”  Claim 49 is the only claim that recites a single chemical “species,” presumably the molecule that the university thought was the most promising at the time the provisional was drafted.

Claims 2-48 lie between these two extremes, defining a huge number of subgenuses of the genus of compounds defined by Claim 1 – by my count over 500,000. (Note that the terms genus, subgenus, and species are relative terms when used in this context.)  How, one might ask, can 47 patent claims define over half a million subgenuses? The answer is through the use of multiple dependent claims that depend upon other multiple dependent claims, a practice that is not permitted under U. S. law.

The Manual of Patent Examiner Procedure (MPEP) defines a multiple dependent claim as “a dependent claim which refers back in the alternative to more than one preceding independent or dependent claim.”  It also cites 37 C.F.R. 1.75 for the proposition that “[a] multiple dependent claim shall not serve as a basis for any other multiple dependent claim.”

37 C.F.R. 1.75 further provides that for fee calculation purposes, a multiple dependent claim will be considered to be that number of claims to which direct reference is made therein. For fee calculation purposes also, any claim depending from a multiple dependent claim will be considered to be that number of claims to which direct reference is made in that multiple dependent claim.

This fee calculation policy reflects the reality that a multiple dependent claim is simply a shorthand means of reciting multiple discrete patent claims.  For example, the provisional’s claim 12 recites “[t]he compound of any one of claims 1-11 wherein R2 is hydroxy.”  That is simply shorthand for and the functional equivalent of 11 discrete dependent claims, i.e., the compound of claim 1 wherein R2 is hydroxy, the compound of claim 2 wherein R2 is hydroxy, the compound of claim 3 wherein R2 is hydroxy, the compound of claim 4 wherein R2 is hydroxy, etc..

When you start going down the path of multiple dependent claims that depend upon other multiple dependent claims, which in turn depend on other multiple dependent claims, etc., the number of discrete dependent claims can become immense. In this case, the provisional’s claim 47 is a multiple dependent claim that, inter alia, refers back to another multiple dependent claim (claim 45), which in turn refers back to a third multiple dependent claim (claim 33), which refers back to a fourth multiple dependent claim (claim 21), which refers back to a fifth multiple dependent claim (claim 13), which refers back to dependent claim 2. If you follow this path, you arrive at a subgenus that the University asserts is the same subgenus claimed in the later issued patent.  Assuming this to be correct, then, as Dennis pointed out in his post, claim 47 does appear to encompass a claim that specifically defines the later claimed subgenus.

The problem is, claim 47 also encompasses 250,880 other unique claims, each of which defines its own subgenus. The huge number results from the multiplicative effect of five iterations of multiple dependent claims. One can readily understand why the PTO does not allow multiple dependent claims that depend on other multiple dependent claims. But since this was only a provisional application, the claims were never examined, and are simply serving as a vehicle for disclosing a huge number of subgenuses.  By my count, the provisional includes a total of 584,431 subgenus claims.

The Board concluded that the claims in the provisional did not provide ipsis verbis support for the later claimed subgenus, albeit without providing much in the way of explanation, and the Federal Circuit affirmed. Black’s Law dictionary defines ipsis verbis as “in the identical words, as opposed to substantially.” In my view, claim 47 does literally describe the later claimed subgenus, the problem is that it is buried in astronomical number of other subgenuses.

The courts have long used the terminology of “blaze marks” when assessing written description support for a later claimed chemical compound or genus.  The term refers to the practice of marking a trail through the forest by slashing the bark of trees. Expanding upon that metaphor, imagine a vast forest wherein there lies hidden a beautiful waterfall.  One could employ blaze marks to chart out a trail leading to the waterfall.  But if all of the trees in the forest have a blaze mark, the explorer would have no idea which marks to follow, regardless of the fact that one could go back retrospectively and point out specific blaze marks that would define a trail leading to the waterfall.  The point is, even if there are blaze marks defining a trail to the waterfall, as a practical matter it would be very difficult to find the correct trail if there are too many other blaze marks defining a huge number of trails that do not lead to the waterfall.

Returning to the case at hand, I do not think the result would have changed if somehow the university could have, perhaps with the help of AI, drafted 584,331 discrete dependent claims that would have been the functional equivalent of the multiple dependent claims that it did file in its provisional application.  At some point, the disclosure of too many alternative possibilities can, as a practical matter, negate the disclosure of one specific subgenus. I would suggest that this is the basis for the Board’s determination that there was not ipsis verbis support for the later claimed subgenus, nor were there sufficient blaze marks pointing the way.

And given the standard of review, it is not surprising to me that the Federal Circuit affirmed.  As stated in its opinion, “the primary considerations in a written description analysis are factual and must be assessed on a case-by-case basis. We thus review the Board’s decision regarding written description for substantial evidence.”

Laundry Lists of Components are Insufficient Written Description for a Particular Combination

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by Dennis Crouch

The pending Supreme Court case of Amgen v. Sanofi focuses on a broadly claimed genus and asks whether the disclosure is sufficiently detailed.  The Federal Circuit’s recent UMN v. Gilead is the flip-side.  Regents of the U. of Minnesota v. Gilead Scis., Inc., 2021-2168, — F.4th — (Fed. Cir. Mar. 6, 2023).  UNM’s original disclosure is extremely broad with “laundry lists” of components that might be included in various combinations;  while the later-added claim is directed to a more particular sub-genus combination.  The court looked in vain for some indication in the specification as to why the claimed combination is important or particularly suggested.  Here, they disclosed a large forest, but failed to disclose the tree that turned out to be valuable.

Going forward, a patentee might avoid this particular problem with some patent attorney tricks.  Rather than listing all potential components for each functional group and generally suggesting their combination, an early-stage patentee might have its AI assistant provide a hypothetical example of each possible combination, one at a time.  That situation would provide clear ipsis verbis disclosure and thus more likely survive a written description challenge.

= = =

Most U.S. patents assert priority to at least one prior patent application filing.  The early filing date helps avoid would-be intervening and invalidating prior art.  But, the right to priority is not automatic. In addition to the formal paperwork, the original application must sufficiently disclose the invention as claimed in the later patent.  Sufficiency of disclosure is generally judged under 35 U.S.C. §112(a) with the doctrines of enablement and written description.

A patent that improperly claims priority is not automatically invalid.  Rather, the priority filing date is rendered void and then we consider whether the  invention was still novel and nonobvious as-of the later filing date.  This setup also allows these disclosure issues to be considered during Inter Partes Review  (IPR) proceedings that are statutorily limited to anticipation and obviousness grounds.

 

In Regents of the U. of Minnesota v. Gilead Scis., Inc., 2021-2168, — F.4th — (Fed. Cir. Mar. 6, 2023), the Federal Circuit faced the issue of whether the  written description found in UMN’s priority applications supported the claims in the resulting US8815830 patent.  Here, the ‘830 patent covers the drug sofosbuvir that has FDA approval for Hep-C treatment.  Claim 1 does not simply cover sofosbuvir, but instead an entire genus of molecules that fit the general structure shown above and where functional groups R1 – R7 are further defined within the claim.  For instance, “R3 is hydroxy … R5 is an amino acid …”

UMN’s initial patent application was a provisional filed back in 2004, followed by a PCT application in 2005, followed by a non-provisional application in 2007 and finally by another non-provisional application in 2013 that led to the ‘830 patent. In 2010, a Gilead patent application published (“Sofia”) that discloses the claimed invention.  In this setup, UMN’s can disregard Sofia so long as it properly claimed priority to at least one of those earlier applications.  But, if priority fails then the ‘830 patent is anticipated.

During the IPR, the Board sided with Gilead — concluding that the priority filings lacked sufficient written description and thus that the claims were invalid as anticipated. On appeal, the Federal Circuit has affirmed in an opinion by Judge Lourie and joined by Judges Dyk and Stoll.

The patent act requires a “written description of the invention” be submitted in the form of a patent specification.  “Judicial gloss” explains this requirement has proving that the inventor “possessed the invention as claimed” at the time of filing.  Written description issues most often arise in situations like this one where the patented claims were not found in the original filing documents; but rather were added later during prosecution.

The courts have been particularly hard on patentees seeking to claim coverage for a large genus of compounds.  In that situation, it is typically a difficult endeavor for the patentee to literally enumerate all operable compounds covered by the claims.  That level of disclosure is not required, but the patentee must describe “the outer limits of the genus” as well as “either a representative number of members of the genus or structural features common to the members of the genus, in either case with enough precision that a relevant artisan can visualize or recognize the members of the genus.”  The court will also consider “blaze marks within the disclosure that guide attention to the claimed species or subgenus.” Slip Op., citing In re Ruschig, 379 F.2d 990 (CCPA 1967).

Ipsis verbis: I mentioned above that written description challenges are most often successful in situations where the claim scope has changed during prosecution.  Claims that are found word-for-word in the original application (ipsis verbis) can still fail the written description requirement, but that result is much less likely.  Here, UMN argued that the original provisional filing disclosed the eventual claim in ipsis verbis form — pointing to a combination of elements of provisional claims 1, 2, 13, 21, 22, 45, and 47 that collectively forming a substantial word-for-word recitation of claim 1 in the ‘830 patent.  On appeal though the Federal Circuit found that combination of this disparate set of claims required a bit too much cleverness.

Following this maze-like path, each step providing multiple alternative paths, is not a written description of what might have been described if each of the optional steps had been set forth as the only option. This argument calls to mind what Yogi Berra, the Yankee catcher, was reported to have said: “when one comes to a fork in the road, take it.” That comment was notable because of its indeterminacy, its lack of direction. Similarly, here, all those optional choices do not define the intended result that is claim 1 of the ’830 patent.

Moreover, Minnesota’s argument is akin to that rejected in Fujikawa, where the applicant “persist[ed] in arguing that its proposed count [wa]s disclosed ipsis verbis in Wattanasin’s application.” Fujikawa v. Wattanasin, 93 F.3d 1559 (Fed. Cir. 1996). As the court explained in Fujikawa: “just because a moiety is listed as one possible choice for one position does not mean there is ipsis verbis support for every species or sub-genus that chooses that moiety. Were this the case, a ‘laundry list’ disclosure of every possible moiety for every possible position would constitute a written description of every species in the genus. This cannot be because such a disclosure would not ‘reasonably lead’ those skilled in the art to any particular species.”

Slip Op.  I would argue that the Federal Circuit erred on this point. The UMN provisional application’s Claim 1 is directed to the same general molecule, but with much broader definitions for each of the functional group. Then, the subsequent provisional dependent claims (2, 13, 21, 22, 45, and 47) refine the scope of those functional groups in a manner that is identical to that eventually claimed in the ‘380 patent.  Here, each of these dependent claims are defined as being dependent upon any of the prior claims.  Thus, provisional dependent claim 47  seemingly includes the identical limitations found in the ‘830 patent claim 1. Yes, it is a little bit complicated, but so is chemistry.

It is not clear that my quibble would change the outcome of the case since ipsis verbis support does not necessarily result in sufficient written description.

= = =

The absence of ipsis verbis support is not fatal, so long as the original filings sufficiently show possession of the full scope of the claimed invention.  In cases involving very broad disclosure (a forest), the courts look carefully for indications that for disclosure of the particular trees actually claimed.  But, long lists of components are not sufficient. Rather, the suggestions – the “blaze marks” — must be clear.  Here, the PTAB found the patentee had failed to provide that roadmap and, on appeal, the Federal Circuit affirmed on substantial evidence.

[T]he structures [disclosed in the provisional] are so extensive and varied that [they] encompasses a significantly larger genus than that claimed in the ’830 patent, are not sufficiently common to that of claim 1 of the ’830 patent to provide written description support.

Slip Op.

UMN made other arguments that were all rejected:

  1. The PTAB should have made a credibility determination or other fact finding regarding expert testimony.  On appeal though the Federal Circuit concluded that the PTAB is not required to address each and every  side contention within its decision.
  2. The PTAB previously issued a decision that is facially inconsistent with this case, and thus is acting in an arbitrary and capricious manner.  On appeal, the court found no problem since the Board is not bound by prior panels.
  3. As a state institution, UMN is immune from IPR challenges.  UMN recognized that this argument was previously decided by the Federal Circuit.  Further, UMN has already lost a case on this argument and so is not just bound by precedent but also collateral estoppel.

Cancellation affirmed.