Posts Tagged: "Guest Contributor"

One Inventor’s Story and Hopes for Kathi Vidal

On Wednesday, May 25, United States Patent and Trademark Office (USPTO) Director Kathi Vidal and a panel of academics from Silicon Valley participated in a 90-minute, live Q&A webinar regarding the state of the USPTO. I attended virtually. I am a five-time world jump rope champion and the only jump roper to design and patent a jump rope handle technology. I was granted my two patents (US 7,789,809 B2 and US 8,136.208 B2) in 2010/2012. I started my jump rope manufacturing business, JumpNrope, in 2010 here in Louisville, Colorado. I am proud to also say that I source all my jump rope parts and pieces from U.S. vendors. We make all our jump ropes by hand in Colorado. My technology not only changed the sport of jump rope by offering a precision speed jump rope handle, but it also changed the fitness industry. To date, hundreds of companies have infringed on my patent, including Rogue Fitness, the largest fitness distributor for CrossFit and Strongman. As detailed in my case, I believe that Rogue has willfully infringed on my patent since 2012 by selling tens of millions of dollars’ worth of infringing jump ropes per year.

Protecting Color Trademarks in Asia

With their creative minds, marketing and advertising folks never disappoint in coming up with brilliant ways to distinguish their goods and services from the competition – for example, Tiffany’s robin’s egg blue and Hermes’ orange. This type of marketing genius allows one to immediately recognize a brand without even seeing the word “Hermes” or knowing how to pronounce it. On the flip side, these ideas are prime targets for copycats. After all, by simply changing the jewelry box color to the exact pantone shade of Tiffany’s turquoise blue, a seller could immediately quadruple his/her revenue by profiting from consumer confusion without having to increase the inventory quality or spend a dime on marketing. The question then is: is it possible to protect a color (or color combination) in all jurisdictions by registering it as a trademark?

‘I Shall Be Released’: A Favorite Song Among SEP Implementers

As we have previously explained, many implementers wish to require patent owners to establish (1) the need for licenses, and (2) that any terms offered are in fact fair, reasonable and non-discriminatory (FRAND), but without having to make any commitment to accepting FRAND licenses, and without ever losing entitlement to the same. With respect to the latter, recall, for example, Apple’s position it its case with PanOptis, namely that PanOptis had “no legal right under U.S. law to impose on Apple an obligation to negotiate a license to Plaintiffs’ portfolios of declared-essential patents or forfeit any defenses for failing to do so” (Apple Inc.’s Motion to Dismiss Count VIII for Lack of Subject Matter Jurisdiction, Optis Wireless Technology, LLC, Optis Cellular Technology, LLC, Unwired Planet, LLC, Unwired Planet International Limited, and PanOptis Patent Management, LLC v. Apple Inc., Civil Action No. 2:19-cv-00066-JRG (E.D. Texas, June 22, 2020)) [hereinafter Optis v. Apple]. Basically, such implementers want the option of capping their exposure at FRAND rates if ever found to infringe. We refer to this as an implementer wanting to have its FRAND cake and eat it too.

Interim USPTO Process Moves the Needle on Transparency – But Predictability May Suffer Without Further Guidance

In a blog post on May 24, just over a month after being sworn in, Director Kathi Vidal stated that one of her priorities is to “accelerate change and communications by adopting interim processes and procedures while [the USPTO] work[s] to finalize.”  A mere two days later, the U.S. Patent and Trademark Office (USPTO) issued one such interim process for Patent Trial and Appeal Board (PTAB) decision circulation and internal PTAB review. In addition to speed, this interim process is consistent with Director Vidal’s emphasis on transparency by ensuring that the parties to a proceeding and the public know the identity of the decision-makers. Nevertheless, as discussed further in this article, Director Vidal and PTAB Executive Management must be proactive in identifying areas for further publicly-issued guidance. Otherwise, consistency in PTAB decision-making is likely to suffer.

Protecting Intellectual Property in Augmented Reality

Augmented Reality (“AR”), along with Virtual Reality (“VR”), is rapidly growing in prominence and will be transformative to the way we live, work, learn and play. Both AR and VR will undoubtedly bring a whole set of novel IP issues for individuals, companies, IP practitioners and the courts. Like any new technological area, such as cyber law for the nascent internet technology in the early 1990s, many legal issues need to be addressed and many more are yet to be discovered as this area evolves.  

Critical Emerging Technology: Claiming and Disclosing Blockchain, Fintech and Cryptocurrency

A blockchain is a digital ledger comprised of so-called “blocks.” Every piece of new information uploaded to the digital ledger is a block having a set of data. Once these blocks are linked – that is, every time that new information is uploaded via a block – it becomes part of the digital ledger for forever and all time; the blocks cannot be edited, deleted or modified, even by the company or person who initially created the blockchain. Because the history and genesis of blockchain data cannot be altered or deleted, blockchains are a valuable tool for identifying the provenance of an item and tracking the path from its original source to its ultimate destination.

‘Russian Doll’ Copyright Infringement: Beware What’s in the Background

In the winter of 2014, Leah Bassett rented her Martha’s Vineyard home to Joshua Spafford. He seemed like a nice guy, quiet and well-dressed. Joshua listed his employer as “Mile High Media.” Mile High then used the home to shoot several adult videos. Leah, the homeowner, didn’t know that they were going to use her home in this way. She was upset when she learned what they had done, but in the end, she got her revenge thanks to copyright law.

DOE’s Misuse of Bayh-Dole’s ‘Exceptional Circumstances’ Provision: How Uniform Patent Policies Slip Away

A principal purpose of the Bayh-Dole Act of 1980 was imposing a uniform patent ownership policy on all federal agencies. Previously, agencies took rights to inventions made with their funding, but over the years they had developed a multiplicity of often conflicting procedures for filing appeals, with some agencies having different policies for different programs. The resulting confusion made companies crazy trying to navigate through them. The burden was particularly heavy on small businesses. The Bayh-Dole Act established a uniform policy requiring all agencies to waive invention ownership to those making patentable discoveries with their support. It also allows agencies to deviate from automatic contractor ownership of  inventions in exceptional circumstances: “when it is determined by the agency that restriction or elimination of the right to retain title to any subject invention will better promote the policies and objectives of this chapter.” 

Tips From a Former Examiner: Pre-Appeal Brief Review

After two or more U.S. Patent and Trademark Office (USPTO) office actions on the merits, a patent applicant has the option to appeal the patent examiner’s decision rejecting one or more claims to a higher forum, i.e., the Patent Trial and Appeal Board (PTAB). Since 2005, the USPTO has provided an ongoing pilot program in which an appellant, upon the filing of a notice of appeal, may also request a pre-appeal brief review. Why make this request? What are the pros and cons? What are the risks? In this article, I will explore these issues from my perspective as a former USPTO patent examiner.

Catapulting BlackBerry: A Data-Intensive Look, Part II

Measuring the quality of a patent portfolio doesn’t have to be subjective. There are a number of objective indices that measure patent families’ potential economic and reputational value, the breadth of patent claims and the statistical validity strength of a patent. The Patent Value Index, or PVIX, measures the potential economic and reputational value of a patent. PVIX scores each patent family on a curve from 0-100 using a weighted average of the GDP of the countries in which the family has granted members and the number of forward citations garnered by the family members compared to peer patent families in the same technology classes.

USTR Needs to Step Up Trade Enforcement

As a former Chairman of the House Judiciary Committee and co-author of major patent legislation, I have a special interest in supporting and protecting U.S. intellectual property rights. So, I took note last month when the Office of the U.S. Trade Representative (USTR) released its latest Special 301 Report on Intellectual Property Protection and Enforcement.

What the PTAB’s CRISPR-Cas9 Decision for Broad Institute Means for Gene Editing Patent Landscape

As previously reported here, on February 28, 2022, in Interference 106,115, the Patent Trial and Appeal Board (PTAB) issued a decision in which it awarded inventive priority to the Broad Institute (Broad) over the University of California (U.C.) on an invention covering applications of the CRISPR-Cas9 gene editing system in eukaryotic cells. This decision purports to award substantial control of the CRISPR-Cas9 patent landscape to Broad. This article provides additional background on CRISPR-Cas9 technology, outlines the critical findings in Interference 106,115 that resulted in the PTAB awarding priority to Broad, and describes the impact of the PTAB’s decision for Broad, U.C., and other companies involved in the development of CRISPR-Cas9 technology.

Patent Filings Roundup: Petitions on Key Dupe Patents Denied Under Fintiv; Taxidermy Patent Filings Stuffed

It was a slow week at the Patent Trial and Appeal Board (PTAB) and a fast one in the district court, with 82 new patent complaints and 85 terminations, but just 18 patent filings at the PTAB. Those few filings were mostly a battery company challenging Maxell patents, a few bigger NPE cases, and Apple and Samsung filing against assertor Smart Mobile Technologies from the middle of last year. Askeladden had a petition denied on the merits, Microchip Technology had a petition denied on General Plastics, and The Hillman Group got four inter partes reviews (IPRs) denied under Fintiv, guaranteeing they will head to trial in the Eastern District of Texas; more below.

Tips from a Former Examiner on How to Conduct Interviews at the USPTO

The “interview” during the patent prosecution process is a meeting typically held between a patent examiner and the applicant’s representative (i.e., a patent practitioner). In some cases, the inventor, assignee, or a subject matter expert may also be present. During my time as a United States Patent and Trademark Office (USPTO) patent examiner, I would almost always encourage scheduling an interview with applicant’s representative to discuss the merits. Curiously, many patent practitioners are not proactive in initiating an interview with the examiner. Why is an interview so important? When and how should it be held? How does an applicant’s representative conduct an effective interview?

Nike’s Trademark Fight Against StockX Moves Offline

StockX, which describes its e-commerce resale platform as “[t]he current culture marketplace,” is primarily used by consumers to resell and buy sneakers, among other items. In January 2022, StockX announced its plans to launch The Vault, which uses non-fungible tokens (NFTs) to allow buyers to track ownership of physical products resold on its e-market and warrant their authenticity, including Nike shoes. Swiftly thereafter, Nike sued StockX in the United States District Court for the Southern District of New York (SDNY), alleging that StockX’s use of Nike’s famous marks in connection with its NFTs constitutes trademark infringement. Nike, Inc. v. StockX LLC, 1:22-cv-00983-VEC. In its original February 3, 2022, complaint, Nike alleged that StockX mints NFTs using Nike’s trademarks without authorization and sells them to consumers, who either believe or are likely to believe that StockX’s NFTs are connected with Nike when they are not.