Posts Tagged: "Guest Contributor"

Doing business in China is exciting and potentially lucrative; however, there are “hidden” traps. Most of these hidden traps have been extensively discussed in the Western world – for example, China’s unique subclass system and its massive counterfeiting issue. One area in which we haven’t seen a lot of discussion but has certainly triggered some headaches is the idea – or rather, the requirement – that a business should “register” its website with the Chinese government.

While there are certainly limits on how—and how much—aftermarket sellers can use OEM trademarks to communicate key information about aftermarket parts, the legal boundaries for aftermarket sellers are not always clear. And, in the automotive industry, the question of legal boundaries is perhaps most intriguing when the trademark concerned is one of product configuration. Indeed, several U.S. auto companies own incontestable trademarks registrations for various source-identifying parts of their automobiles such as grilles, headlights, and fenders. In light of such perpetual trademark rights in these part configurations, how can aftermarket sellers offer visually identical replacement grilles, headlights or fenders without significant risk of a trademark infringement claim from the auto companies?

The World Intellectual Property Organization (WIPO) has published its annual World Intellectual Property Indicators. For the second consecutive year, the number of design applications filed worldwide continued to grow, with an estimated 963,100 applications filed in total globally. The 2016 growth rate was 10.4%, following 2015’s more modest growth rate of 2.3% and 2014’s 10.2% drop in applications. 90% of the growth in 2016 can be attributed to increased filings in China.

It is irresponsible for adults to give children who fail to complete their work credit based on the excuse that the children could have, should have, would have completed their assignments. It is much more inequitable for the U.S Patent Office to deprive inventors of the credit they deserve (in the form of patent allowances) because some conjured up combination of disconnected individuals—who have little, if any, temporal or linguistic ability to communicate with one another—could have, should have, would have eventually produced the claimed invention.

Managing international trademark portfolios in the age of globalization can be a fickle endeavor.  Ecommerce has blown the top off traditional thinking as it relates not only to advising your clients on what and where to file, but also how to strategically maintain those filings in the face of an increasingly crowded and adversarial global marketplace.  When a brand attempts to gain a foothold with an emerging clientele, fortune tends to favor the strategically bold.  For this reason, companies are often trying to establish their IP rights in countries where actual use or implementation may not be in the cards for years.  In the case of trademarks, the benefits are obvious: if/when a product is launched, a service begins, or a brand is introduced, a strong and enforceable portfolio is waiting to greet and protect it.  However, in jurisdictions around the world, such a strategy leaves open the possibility of an attack on these rights, most commonly in the form of a non-use cancellation action. 

The WHOIS database provides technical information about the date of creation and expiration of a domain, as well as contact information for the registrant of a website, including name, physical address, email address, and phone numbers. GoDaddy and WHOIS.com appear to have selectively redacted the information only for registrants providing an EU contact address. However, given the difficultly of determining which domain owners are EU citizens, many registrars, such as Tucows, removed data for all domains regardless of where the registrant is located. In light of this WHOIS blackout, the GDPR has effectively made it easier for counterfeiters and infringers to evade detection.

Dissent is not the highest form of judgment for judges on the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO).  As discussed in further detail below, our own analysis indicates that dissents for ex parte appeals are found in about .5% of decisions issued by the PTAB.  A PTAB judge deciding an ex parte appeal is more than ten times less likely to dissent than a Federal Circuit (CAFC) judge. Relying on internal USPTO policies and former PTAB judges’ personal experiences, a recent spate of commentary has provided different explanations regarding the rarity of dissents for ex parte appeals.  We were still left wondering why some judges go out of their way to write dissents.  In an effort to better understand this issue and what the dissents might reveal about the ex parte appeal process in general, we conducted a statistical analysis of dissents in recent ex parte appeal decisions.

This time last year, the combination of the Commission’s September 2017 Communication and the proposed Article 13 of the draft Copyright Directive led some to conclude that Europe was indeed moving away from protecting internet intermediaries. Although the Communication has been backed up by the March 2018 Commission Recommendation (with its focus on terrorist content), whether Article 13 is ever enacted and in what form is still to be decided. Meanwhile, we await answers from the CJEU regarding the permissible subject-matter breadth and territorial width of injunctions made against intermediaries, and will keep an eye out for legislative action from the Commission following from its Recommendation earlier this year.

contrary to popular notion, U.S. Patent No. 4,344,142 to James Diehr was not the first attempt to patent the idea of performing a real-time simulation of the Arrhenius equation using periodic temperature measurements of a rubber mold in order to cure rubber.  In fact, nearly two years prior to Diehr’s filing, Thomas Smith filed for a device that performed the very same algorithm using dedicated logic, which was granted as U.S. Patent No. 3,819,915. Smith was also granted U.S. Patent No. 4,022,555 for another rubber-curing device based on discrete logic. Similarly, William Claxton filed for patent protection in 1974 for an Arrhenius-based rubber-curing device using analog components, which issued as U.S. Patent No. 4,044,600.  

One might naturally expect that, if a rejection under § 101 appealed from the PTAB failed to address all the claim limitations and had zero supporting evidence to determine whether something was abstract or well-understood, routine and conventional, the case would be a slam-dunk at the Federal Circuit.  After all, according to Supreme Court and Federal Circuit precedent, the Federal Circuit would be “powerless to affirm the administrative action by substituting what it considers to be a more adequate or proper basis.” Unfortunately though, nothing could be farther from the truth as is demonstrated by the Federal Circuit’s recent decision of In re Villena, Appeal No. 2017-2069 (August 29, 2018) where, as is proved by the joint appendix, the examiner failed to address each and every claim limitation separately, to address the claim limitations as a whole, ordered combination, and to provide any evidence whatsoever to support his factual assertions.

The issue faced by the EU High Court was whether shape and color of Louboutin’s mark could be separated under the circumstances; i.e., whether color applied to the sole of a high-heeled shoe is essentially a “shape” mark within the meaning of the EU trademark law. The EU High Court found in favor of Louboutin, pointing out that Louboutin did not seek to protect a particular shape, but the application of a color to a specific part of a high heeled shoe. 

George Santayana is attributed with the aphorism: “Those who cannot remember the past are condemned to repeat it.” This is modern § 101 in a nutshell. Every horror we in the patent community are now experiencing under Alice/Mayo isn’t new, but a repeat of a drama played out long ago… Every great horror story has a monster… In the patent world, the monster is “invention.”

Cobra Products filed a lawsuit for patent infringement. G.T. Water then filed for a re-examination of my patent at the U.S. Patent and Trademark Office to invalidate my patent claims. My licensing agreement with Cobra and BrassCraft was to share equally in the cost of defending my patent. However, Cobra Products elected not to help me in the defense of my patent at the USPTO. I was forced to bear the total cost of that alone. After seven years of validity proceedings, which have cost more than $250,000, the Patent Trial and Appeal Board (PTAB) has invalidated all 12 of my claims covering the Zip-It. How can the USPTO issue a patent with 12 claims and then use the PTAB to neuter my patent? Since this has been going back and forth with the court system, there are now numerous other entities which have engaged in copying and infringing my patented invention.

On August 15, 2018, Fall Line Patents, LLC asserted U.S. Patent No. 9,454,748 against a number of companies. Specifically, Fall Line alleged in nine separate lawsuits that the mobile applications provided by AMC Entertainment, McDonald’s, Boston Market, Panda Express, Papa John’s, Pizza Hut, Regal Cinemas, Starbucks, and Zoe’s Kitchen directly infringe at least Claim 1 of the ‘748 patent. All of the lawsuits were filed in the Eastern District of Texas and request permanent injunctions as well as damages.

Litigation finance in the university context is thus particularly valuable. Even for smaller matters, litigation finance shifts spend off the university’s balance sheet, allowing it to put its own capital to use in its primary endeavors: Education and innovation. For larger matters, litigation finance shifts risk from the university—which, despite its diverse technology portfolio, may have only a small number of claims with attractive litigation prospects—to an entity with a much larger book of diversified risk across uncorrelated claimants.