A hashtag is a useful way to promote your brand on social media platforms such as Twitter, Facebook, and Instagram. When the name of a brand, a tagline or catchphrase is hashtagged in a post, other users of the platform can find the hashtag easily by simply searching for that particular tag. It’s become an essential part of every brand’s social media marketing strategy. It can be used to attract new customers and engage with them. IP Australia updated the Australian Trade Marks Office Manual of Practice and Procedure in 2016 to include a definition for a hashtag and offers some guidelines for businesses to follow. It also lists examples of what could be seen as ambiguous cases, which you can look at to see if they could also relate to the eligibility of your brand.
Federal Circuit: ‘Physicality’ of Processing Paper Checks Does Not Save Solutran’s Claims from 101 Challenge
The Federal Circuit recently reversed the District of Minnesota’s denial of summary judgment and held claims related to paper check processing invalid under 35 U.S.C. § 101. Despite the claims being directed to processing “physical” checks, the Court held that “the abstract idea exception does not turn solely on whether the claimed invention comprises physical versus mental steps.” The Court also reasserted that novelty and/or non-obviousness does not obviate ineligibility under Section 101. See Solutran, Inc. v. Elavon, Inc., Nos. 2019-1345, 2019-1460, 2019 U.S. App. LEXIS 22516 (Fed. Cir. July 30, 2019) (Before Chen, Hughes, and Stoll, Circuit Judges) (Opinion for the Court, Chen, Circuit Judge).
Perhaps the report on China’s strategy for eclipsing the U.S. lead in biopharma from the Information Technology & Innovation Foundation (ITIF) resonated so strongly with me because of several articles in The Wall Street Journal. Taken together, they present a sobering picture of what we’re up against. The first was a book review of “Leadership and the Rise of Great Powers” by Yan Xuetong, a prominent Chinese professor. Characterized as “a window into Chinese elite thinking about the world; it is as much a political manual as an international-relations text book.” The thesis is the inevitable rise of China as the world’s dominant power at the expense of the United States.
Upon receipt of the fateful “love” letter from its fictitious IP client, the fictitious law firm was speechless—momentarily. Feeling aggrieved and misunderstood, and yet hopeful that their relationship could be saved with an added measure of TLC (top-tier legal counseling), the firm summoned up the courage to prepare this reply letter. In an act of contrition (or maybe vindication?), the firm has taken the bold step of publishing it on IPWatchdog. Note to commenters habitually fed up with clients large and small: This one’s for you.
Alternatives to patent litigation are desirable now more than ever. Arbitration can help to resolve patent disputes more easily than the much more complex, expensive and timely endeavor of Patent Trial and Appeal Board (PTAB) proceedings. Patent litigators must deal with an overly complex Inter Partes Review (IPR) system as a result of the Supreme Court’s SAS Institute v. Iancu (138 S. Ct. 1348 2018) decision, new amendment process, and evolution of the “broadest reasonable interpretation” standard. Costly and complicated PTAB proceedings and a lengthy appellate process make arbitration an appealing option to obtain a patentability ruling in a streamlined manner. Below are the top 10 reasons that arbitration can be a better route to follow than an IPR or other PTAB proceeding.
On October 25, the AIPLA Annual Meeting will host a Patent Trial and Appeal Board (PTAB) Inter Partes Review (IPR) trial to determine the fate of a pair of patents issued by the U.S. Patent and Trademark Office (USPTO) to Zaxcom for a Digital Recording Wireless Microphone. Zaxcom is a U.S. manufacturer of high-end, specialized wireless microphones and recording equipment for the film and television industries. The company was founded in 1986 by Glenn Sanders, the named inventor on the challenged patents. The Zaxcom case caught my attention for several reasons. First, this was not a patent troll asserting a stack of vague, overly broad patents, but was an inventor-owned company that was producing the invention. Second, Glenn was manufacturing his invention and creating jobs in the United States. Third, the technology has won Engineering Emmy Awards and has been honored by the Academy of Motion Picture Arts and Sciences with a Technical Achievement Award. Finally, Chief Administrative Patent Judge Scott Boalick was on the panel. How could the USPTO grant a patent, the claimed invention earn Emmy and Academy awards, and then the USPTO decide the patent was likely to be invalid? Especially when Director Iancu is traveling throughout the country and testifying in Congress that it is a new day at the USPTO and that he has restored balance at the PTAB?
Update on 101 Rejections at the USPTO: Prospects for Computer-Related Applications Continue to Improve Post-Guidance
The Supreme Court’s 2014 decision in Alice v. CLS Bank made it significantly more difficult to obtain patents for some computer-related technologies. it is, at best, questionable whether court decisions since then have been coherent and consistent. Similarly, marked variation has been observed across art units and across post-Alice time periods as to how examiners are applying Section 101. However, the U.S. Patent and Trademark Office’s (USPTO’s) 2019 Patent Eligibility Guidance added some much-needed clarity and predictability as to how eligibility of computer-related patent applications is being assessed at the agency. Our previous research focused on the effect that Alice and Electric Power Group had on examination trends in computer-related art units. To investigate how the new 2019 USPTO eligibility guidance has affected those trends, we updated our analysis.
AIPLA: The Supreme Court Must Ensure the U.S. Government Adheres to the American Rule in Peter v. NantKwest
When a patent or trademark applicant loses in front of the U.S. Patent and Trademark Office (USPTO), they can either appeal to a court of appeals or develop a fuller record by starting a district court action. If the applicant goes to district court, then the applicable statute says that the applicant-appellant pays “[a]ll the expenses of the proceedings,” and everyone at one time agreed that those expenses did not include fees for the government’s attorneys. That changed in 2013, when the USPTO unilaterally started including its attorney and support staff fees amongst the expenses. On the first Monday of October—the first day of arguments in the Supreme Court’s 2019 term—the Court will hear argument in Peter v. NantKwest, No. 18-801. The question in that case is whether the word “expenses” includes the government’s attorneys’ fees. On July 22, we filed an amicus brief on behalf of the American Intellectual Property Law Association (AIPLA) arguing that it does not.
The decision came down to two technologies for detecting and correcting noise in signals transmitted over the air for 5G—one of the most fundamental features for wireless communications. Scientists and engineers in 2016 vigorously debated for months which one was technologically superior and most efficient. China had lined up Chinese companies’ and allies’ votes behind the “polar codes” technology led by Huawei. Ultimately, the technology that had broader technical support would share a role in the 5G standard with Huawei’s preferred polar coding. But the heightened political battle in a traditional technical arena was unprecedented. This incident highlights a growing threat. “China has politicized the standards-making process,” the Center for Strategic and International Studies (CSIS) reports. “Beijing expects Chinese companies to vote for [China-backed technologies] whether or not they are the best.”
The Federal Circuit recently affirmed a Patent Trial and Appeal Board (Board) decision finding that Dr. Stephen Quake and Dr. Christina Fan’s (collectively, “Quake”) asserted claims were unpatentable for lack of written description under 35 U.S.C. § 112. See Quake v. Lo, Nos. 2018-1779, 2018-1780, 2018-1782, 2019 U.S. App. LEXIS 20407 (Fed. Cir. July 10, 2019) (Before Reyna, Chen, and Hughes, Circuit Judges) (Opinion for the Court, Chen, Circuit Judge). The claims were directed to a method for determining the presence of a chromosomal abnormality, called aneuploidy, in fetuses. Aneuploidy occurs when a fetus is born with either an abnormally high or low number of chromosomes. The claimed detection was accomplished using a method called massively parallel sequencing (MPS). Specifically, the claims recited a “random” MPS method, which amplified and sequenced all DNA in a sample rather than specific, targeted sequences of DNA. Quake, based out of Stanford University, and Dr. Dennis Lo (“Lo”) based out of Chinese University of Hong Kong began developing the claimed methods around the same time and requested interferences with respect to a number of applications to determine who invented the method first.
The case of Celgene Corp. v. Peter, Nos. 2018-1167 et al. (Fed. Cir. July 30, 2019) has drawn attention for its decision that inter partes review (IPR) may be applied to invalidate pre-AIA patents without running afoul of the Fifth Amendment’s prohibition of taking property without just compensation. Matthew Rizzolo and Kathryn Thornton, among others, have addressed the constitutional aspects of the decision. I will address the lesser issues decided by the Federal Circuit panel before it could reach those constitutional aspects. In particular, the Federal Circuit panel upheld the Patent Trial and Appeal Board’s (PTAB’s) conclusion that the claims in question were obvious. And, perhaps focusing upon the sparkling constitutional issue, the panel first had to address the mundane issues of obviousness; and in disposing of the obviousness issues, the panel set forth an analysis that is unclear at best and is in its present form arguably inconsistent with precedent and public policy.
A few years ago, internet surveys in intellectual property (IP) litigation were novelties—but not anymore. In fact, the internet survey has more than come of age, it has become the preferred methodology for many types of IP litigation-related surveys—especially trademark-related matters. The biggest reason for the rise of the internet survey is the demise of the other more established conventional methodologies. At the same time, the internet continues to add new technological features that enhance its ability to reach populations and probe relevant target markets.
Seventh Circuit Clarifies When Utility Patents Can Be Used as Evidence of Functionality in Trade Dress Cases
On June 12, the U.S. Court of Appeals for the Seventh Circuit decided Bodum USA, Inc. v. A Top New Casting Inc., No. 18-3030, 2019 (7th Cir. June 12, 2019). The case was based on Bodum’s allegation that A Top infringed Bodum’s unregistered trade dress in its Chambord® French press coffee maker design and squarely addressed the doctrine of “functionality” of trade dress. The court addressed two important issues related to functionality: (1) what type of evidence is necessary to prove functionality of a particular design and (2) under what circumstances are utility patents relevant to that analysis?
Since the Supreme Court upheld the constitutionality of inter partes review (IPR) a little more than a year ago in Oil States, several patent owners have brought other constitutional challenges to America Invents Act (AIA) trial proceedings. These cases have been slowly percolating at the Patent Trial and Appeal Board (PTAB), the U.S. Court of Federal Claims, and the U.S. Court of Appeals for the Federal Circuit. In many cases, however, the Federal Circuit has declined to address these constitutional claims on the merits, finding them unnecessary to resolve or insufficiently developed by the parties. But early last week, the Federal Circuit for the first time addressed the applicability of the Takings Clause of the Fifth Amendment to IPRs, holding in Celgene Corp. v. Peter, Case No. 18-1167 (Fed. Cir. 2019) “that the retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking under the Fifth Amendment.” While the court’s holding may appear on its face to forestall current and future Takings Clause challenges to AIA proceedings, its analysis leaves some questions unanswered, and may even provide a narrow path forward for future takings claims. Furthermore, given the Supreme Court’s predilection for addressing both AIA and Takings Clause issues, the Federal Circuit panel’s decision may not be the last word on this interesting issue.
Let’s face it, intellectual property (IP) litigation is a very expensive and risky endeavor. For the accused infringer, the prospect of going to trial means high legal fees and, even worse, a substantial disruption to the business. Even in cases where an accused infringer has viable defenses, leaving a ruling in the hands of the judge or jury is nothing more than a Las Vegas roll-of-the-dice. Whether through informal settlement discussions, mediation, or court-mandated settlement conference, IP defense litigators must arm their clients with a bevy of effective, business-minded settlement strategies. Settling does not have to mean capitulating and paying the other side an arbitrary sum of money to go away. Instead, think of ways to put your client’s available settlement dollars to work. Here are a few practical concepts to set your client on a viable settlement path.