Computer boilerplate – such as including “a processor and a memory” in claims – is commonplace in patent applications. However, the recent case of In re Stanford shows that this can be a double-edged sword, having the potential to both undermine an application and to ruin an opinion that could otherwise have shed light on several of the thorniest open questions in patent eligibility jurisprudence. Skeptical that such a common practice could be so counterproductive? Read on.
Much has been said about how 5G will better use the airwaves, giving wings to new communications between people and between devices. Little has been said though about how 5G could change markets and industries. The equipment market for the radio access network (RAN) is a good example of just one market that is now caught in the updraft of such change. Another market bound to rise is the market for patent licensing—and, in particular, standard essential patent licensing for 5G RAN. To help make sense of the 5G patent licensing market, we have developed an AI-based 5G landscaping tool to help identify and weigh the relative patent portfolios (OPAL) and an indexed repository of all technical contributions made to 3GPP 2G-5G standardization work (OPEN).
Peloton Wants to Cancel the Mark SPINNING for Being Generic – the TTAB Has Rarely Granted Such a Petition
Peloton’s petitions to cancel Mad Dogg’s registered trademarks for SPIN and SPINNING (in Classes 41 and 28) for genericism ask the Trademark Trial and Appeal Board (TTAB) to do what it has rarely done before – cancel marks that were distinctive at the time of filing for losing distinctiveness due to the public’s overuse of the terms. While the TTAB has refused to register or cancel registered marks that were generic terms at the time the trademark applications were filed, the TTAB has rarely cancelled a mark that was distinctive when registered, but over time, became a generic term and lost its distinctiveness, as Peloton argues in its petitions. For example, “Kleenex” is often referenced when discussing generic brands, and while Kimberly-Clark Corporation has faced petitions for cancellation of its “Kleenex” mark, “Kleenex” has remained a registered mark of Kimberly-Clark Corporation since 1924.
The COVID-19 pandemic has caused a dramatic shift in how IP professionals manage their patent and trademark portfolios. Fortunately, many IP law firms and corporate IP departments have survived and managed well in this new environment. They are even showing great optimism as the industry trends toward greater consolidation and tighter global integration. Nonetheless, major concerns remain, challenging both IP owners and their advisers to find more effective ways to solve their portfolio management challenges while focusing on the long-term strategic value of IP.
Cryptocurrencies are virtual currencies based on blockchain technology that uses a network of computers to keep a public ledger of past transactions. The most popular cryptocurrency is Bitcoin, which some believe could replace bonds and serve as a reserve currency in the future. The value of Bitcoin has skyrocketed over recent years, as major companies are buying into it. In February 2021, Tesla Inc. bought $1.5 billion worth of Bitcoin and announced plans to start accepting the currency as payment for its electric vehicles. Since Bitcoin has the potential to be used directly in commercial transactions, fintech companies are developing and patenting related technologies.
Patent Filings Roundup: No Fracking IPRs; New Magnetar NPE Identified; Board Rules on Scope of Adverse Judgment
With a pretty-standard 30 Patent Trial and Appeal Board (PTAB) petitions and 70+ district court complaints filed this week, it’s worth noting that the steady stream of IP Edge and Rothschild suits hasn’t let up, that the WSOU matters continue to bump up the numbers in both, and that Magentar Capital-related petitions and cases continue to flourish. To wit, ZTE pulled the trigger on a few inter partes reviews (IPRs) against some of the WSOU patents asserted against them, showing a little backbone against the frequent assertor; Verizon has continued to trickle out the IPRs against Huawei; Gree earned another few denials under the Board’s discretion (and have now on a per-named-entity basis probably the biggest beneficiaries of it). New NPE of unknown origin Sidekick Technology, LLC was DJ’d by a band of online car sales sites in 2:21-cv-06737 over 12 patents; and the same time that Samsung won some IPRs against Solas OLED, the Magnetar-backed entity hit them back (again) in District court.
Two organizations with which I work have filed comments with NIST on its Bayh-Dole regulatory proposals. The National Institute of Standards and Technology, or NIST, approaches completion of its two-and-a-half-year effort known as the Return on Investment Initiative, as the regulatory revision stage nears its close. NIST has conducted a commendable process and proposed mostly constructive or reasonable updating to rules associated with the Bayh-Dole Act. But one proposal puts at risk the continued success of the storied law for democratizing technology transfer and commercializing inventions coming from federally sponsored research. That is, this law facilitates bringing to practical use inventions that otherwise would sit on shelves.
Though it is not over, it seems that the end of the Covid-19 pandemic may be in sight. A select group of countries has managed to bring vaccines to the market in record time. Take the United States, for example. At the time of this writing, three U.S. companies have managed to produce vaccines that received approval from the U.S. Food and Drug Administration (FDA). The intellectual property that underlies these products quite literally has life-saving potential. This achievement no doubt represents a significant feat in human ingenuity, but it also presents a ripe issue in the intellectual property space — namely, compulsory licensing and intellectual property (IP) waivers. Some feel that the cost of sharing this information represents a bold degradation of the intellectual property system. In developing countries, however, the lack of vaccine availability is proving particularly difficult to manage.
In over 40 years of handling trade secret disputes, I have seen plenty of “successful” results, but never a time when my client said, “Gee that was fun; let’s do it again!” They may tell me they’re happy with the outcome, but hey, I know that it also feels good to stop hitting yourself with a hammer. It’s a fact that more than 90% of trade secret cases settle without a trial. But too often those settlements only happen after years of litigation. There are ways to make that process less painful, and in an earlier article we looked at the advantages and limitations of arbitration and private judging as means to recapture some amount of control over the dispute. But unless the parties already had an arbitration agreement before the problem arose, one of them will probably see an advantage to playing it out in court….This is precisely why that other form of alternative dispute resolution, mediation, is the perfect method for resolving trade secret disputes.
Buffalo is a small Texas town of less than 2,000 people. On the way into town, school zone signs flank both sides of a speed limit sign. I drove through on a Sunday, when school zones do not apply, so I didn’t slow down. Almost immediately, the police lights lit up and I was awarded a speeding ticket. When I started to fight the ticket, I was met with resistance at every level of city government. It quickly became clear that the speed trap was a significant source of revenue for the small town and that the judge, mayor, city employees and even the officer who pulled me over all benefited from that revenue. So, I just paid the ticket and walked away. It is the very definition of a corrupt system when those who make the rules and decisions receive financial benefit from the results of their rules and decisions. New Vision Gaming v. SG Gaming, Inc. (Federal Circuit No. 2020-1399) illustrates this phenomenon as it applies to the U.S. Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB).
How One ITC Initial Determination Highlights the Links Among a Strong Patent System, Jobs and International Cooperation
An Administrative Law Judge (ALJ) at the International Trade Commission (ITC) recently determined that Samsung Phones violate key patents on magnetic emulator technology for contactless payment systems from Pittsburgh’s Dynamics, Inc. We have been collaborating for years in the academic and public sectors on issues raised in that case, and are consulting consult with Dynamics because we think these issues are vital to our innovation ecosystem, our national economy, and our commitments to international partners. It is especially illustrative of the serious risks facing these vital public interests that far too frequently when there has been a full and fair adjudication determining that there has been infringement of multiple patents and that those patents are neither invalid nor unenforceable, the headline more than suggests that the infringer has been cleared of responsibility.
Fundamental to building and executing any successful patent licensing program is the ability to find and prove evidence of infringement, often through reverse engineering methods. A product is purchased and deconstructed to understand how it was built, how it works and what it is made of. The process of reverse engineering usually involves multiple types of analysis; which type of reverse engineering to apply is determined by the type of technology and the industry in which the patented invention is being used. Intellectual property law does not discourage innovators from dismantling the inventions of their competitors, whether the technology is software, electronic, chemical, or mechanical. But there are still limits on how the results of a reverse engineering effort can be exploited.
Almost five years has passed since the enactment of the Defend Trade Secrets Act (DTSA) on May 11, 2016, which provides for civil relief for the theft of trade secrets. The most controversial provision, 18 U.S.C. § 1836(b)(2), authorizes a federal court to issue an order, in extraordinary circumstances, and upon an ex parte application based on an affidavit or verified complaint, to provide for seizure of property necessary to preserve evidence or to prevent the propagation or dissemination of the trade secret. Thus, the issuance of a seizure order is limited to “extraordinary circumstances.” According to the House Report, the “ex parte seizure provision is expected to be used in instances in which a defendant is seeking to flee the country or planning to disclose the trade secret to a third party immediately or is otherwise not amenable to the enforcement of the court’s orders.” In other words, it is intended to stop the dissemination of a trade secret, especially overseas, before its value has been lost through public disclosure. Thus, it provides a trade secret owner with the ability to mitigate the risk that trade secrets are irrevocably lost, transferred, or moved beyond the jurisdiction of the court.
Patent Filings Roundup: Pulling the Pinn; Cal Tech Expands Chip Suit; USF Research Foundation Patent Petitioned
It was another typical Patent Trial and Appeal Board (PTAB)/district court split this week, with 33 petitions (two of them post grant reviews [PGRs]) and 71 district court complaints filed. There’s a seemingly new non-practicing entity (NPE) campaign by Jeffrey Gross, Netcom Global Solutions, LLC, with a few new filings, a Chinese e-Bike manufacturer, Hangzhou Chic Intelligent Tech., Co., Ltd & Unicorn Global, Inc.] who has sued a number of companies over U.S. patents in district court; and somehow the Symbology (and other Rothschild) suits continue to find defendants to sue, this time targeting mall storefronts David Yurman and Perfumania.com. A number of petitions were filed against NPE K.Mizra (also associated with NPE Ginegar LLC, who last week continued to assert U.S. Patent 9,367,531).
What comes to mind when you read these city/year combinations: London 2012. Sochi 2014. Sydney 2000. Did you immediately think of the Olympics? The United States Patent and Trademark Office (USPTO) and its Trademark Trial and Appeal Board (TTAB) believe you did. In 1999, the Board held that the primary significance of “Sydney 2000” is a reference to the Olympics held in Sydney, Australia in 2000 and affirmed the USPTO’s refusal to register a Sydney 2000 mark because the mark falsely suggested a connection with the Olympics. In re Urbano, 51 U.S.P.Q.2d 1776 (T.T.A.B. 1999). Thus, the mark violated Section 2(a) of the Lanham Act, 15 U.S.C. §1052(a), and was not registrable. More than two decades later, the same question is before a federal district court in Colorado, home to the U.S. Olympic and Paralympic Committee (USOPC). The sports apparel and equipment company PUMA SE filed applications in the USPTO to register trademarks consisting of its PUMA mark combined with cities and years for which Olympic Games will be held: PUMA TOKYO 2021, PUMA BEIJING 2022 and PUMA PARIS 2024, for bags, clothing and sports equipment. When the USPTO refused registration of each application based on likelihood of confusion and false connection with the USOPC’s TOKYO 2020, BEIJING 2022 and PARIS 2024 marks, PUMA initiated cancellation proceedings against the USOPC’s trademarks.