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Archive for the ‘IP In the News’ Category

Impact of Nautilus v. Biosig

by Orlando Lopez

Prior to the US Supreme Court decision on June 2, 2014, the standard for invalidating a claim, in litigation, due to indefiniteness was that the claim had to be not amenable to construction (interpretation). The Supreme Court overturned that standard in Nautilus v. Biosig. In Nautilus v. Biosig, the Supreme Court held that a patent claim can be found to be invalid due to indefiniteness if the claim, read in light of the patent specification and prosecution history, fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.

The new standard for invalidity due to indefiniteness is very similar to the requirement for indefiniteness during prosecution. A decision on whether a claim is indefinite requires a determination of whether those skilled in the art would understand what is claimed when the claim is read in light of the specification. MPEP 2173.

The impact of Nautilus on prosecution will be the enhanced awareness of indefiniteness. Terms such as “capable of,” and “can be” should be avoided (see Ex Parte Breed PTAB decision of June 4, 2014).

The impact of Nautilus on litigation is harder to assess. It all depends on how the term “with reasonable certainty” is interpreted by the Federal Circuit. Some caution will result from the Supreme Court decision but the fact that the term in question is discussed in a Markman hearing and a claim construction is arrived at, gives some credence to the reasonable certainty. We will have to wait and see, but for sure, indefiniteness will be back in the quiver of tools for invalidity.


Alice v. CLS: Alice in Supreme Court Land

by Orlando Lopez

On June 19, 2014, the Supreme Court released their decision and opinion on Alice v. CLS. The holding of the Supreme Court is that the split en banc decision of the Federal Circuit Court of Appeals finding the claims in patents assigned to Alice Corporation invalid for being related to unpatentable subject matter is affirmed. If Alice wants to find how to determine whether claims are drawn to an abstract idea, Alice still has to go to the Wizard. The opinion of the Supreme Court on Alice v. CLS does not provide any guidance on how to determine that claims are drawn to an abstract idea.

The Alice v. CLS Supreme Court opinion does clear up any possible misunderstanding of the Mayo v. Prometheus opinion. In Mayo, the Court, referring to Flook, stated that, if the process included other elements or combination of elements, referred to as an “inventive concept,” so that the patent was a patent for more than the natural law (abstract idea), the process was patentable. In Alice, the Court explains the Mayo statement, restating the Mayo approach as a two-step approach:

  1. First determine whether the claim is directed to one of the patent-ineligible concepts (law of nature or abstract idea); and
  2. Search, in the claim, for elements or a combination of elements that, when added to the patent-ineligible concept, render the claim as a claim for more than just the patent-ineligible concept.

This restatement of the approach is more palatable than the look for an “inventive concept.” By restating Mayo, the Court has made it safer to use Mayo.

The Court also restates in Alice that adding a generic computer to the method claim does not make the method claim patentable. This restates the present position of the US Patent and Trademark Office (USPTO) that a specific machine, a computer programmed to perform the process, is needed. However, programming a patent-ineligible concept will not render the concept or system patentable.

The concurring opinion shows that at least three Supreme Court Justices could find business methods unpatentable. We will have to wait for another decision (or for the Wizard) in order to find how to determine that claims are drawn to an abstract idea.


Comparing Apples to Oranges

by Bruce Jobse

At one point or another, most of us have been accused of comparing “apples to oranges.” Well, that’s exactly what US Trademark Trial & Appeal Board (TTAB) did in reaching a recent non-precedential decision in Apple, Inc. v. Echospin, LLC. In their analysis, the TTAB literally compared the well-recognized design mark of Apple, Inc., shown below left, to the applied for design mark of Echospin, shown below right. Apple opposed registration of Echospin’s design mark alleging that the applied-for design is confusingly similar to Apple’s iconic logo for similar goods and services.

What do you think? Are these two designs confusingly similar?

There’s no mistake, the Apple design looks like an apple with a bite taken from it. The Echospin mark looks like, well…we’re not sure. John Welch, author of the TTABlog, probably the leading US trademark blog, described the appearance of applicant’s mark as “a butterfly landing on a donut with jimmies.”

Applicant Echospin argued that its design was not an apple, but an orange, designed to distinguish its products and services from Apple, as an alternative to or improvement over Apple. The Board construed applicant’s statement as an admission that applicant’s mark “is shaped like a fruit” and further noted the marks were “quite similar in concept and style, both being simple, abstract representations of fruit, rather than photographic pictures thereof.”

The Board found the Apple logo to be a famous mark noting that Apple “has shown significant market exposure, revenue, and overall fame amongst the relevant public.” When the goods and services associated with two marks are identical, as in this proceeding, less similarity between the marks is necessary for a finding of likelihood of confusion. So, given the broad scope of protection to which Apple’s famous mark was entitled, and enough similarities between the two fruit designs, the TTAB compared apples to oranges and found them confusingly similar and sustained the opposition in Apple’s favor.


Zombie Copyrights Survive First Amendment Attack

by Bruce Jobse

Expressions of ideas, such as books, music, photographs, paintings, movies, etc. are protected by US and international copyright laws, including a number of trade treaties to which the US is a signatory party. Through one of these treaties, the Uruguay Round Agreements Act, the US enacted section 514 (17 U.S.C. 104A) which allows for the “restoration” of copyright protection for foreign works that previously had passed into the public domain due to various informalities. The copyright protection for these works was “dead,” but suddenly came back to life, much like an arising zombie with a missing nose or ear, dragging its leg and moaning something about restricting further derivative works. Upset at the possibility of being terrorized by droves of zombie copyrights looking for a feast of royalty payments, a group of conductors, musicians and publishers, who had previously relied on the dead state of copyright protection for these works, filed suit in the US District Court of Colorado alleging that the restoration terms were too broad and severe. The US District Court agreed with the terrorized plaintiffs, ruling that section 514 violated the plaintiff’s freedom of expression under the First Amendment. On appeal however, the US Court of Appeals for the Tenth Circuit reversed the US District Court decision and remanded the case with instructions to grant summary judgment in favor of the US government. Read the rest of this entry »


Chocolate Wars

by Bruce Jobse

Most people will agree that one of life’s better pleasures is chocolate, and that one of the biggest and most successful purveyors of chocolate is Hershey’s. So when Williams-Sonoma Inc. recently introduced a non-stick, cast aluminum baking pan that “creates one large brownie or cake, scored into 12 embossed chocolate-bar shapes,”  Hershey’s lawyers marched into the US District Court, not far from Hershey, PA, seeking an injunction to stop the alleged dilution of their iconic trademark.  According to Hershey Co., the shape of the company’s signature chocolate bar isn’t just an ordinary rectangle made up of 12 smaller rectangles or “bars,” but rather a design that immediately triggers association in consumers’ minds with Hershey products.  This may be true, but there’s more here than the legal analysis.

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