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Do Not Try Attempt to ‘Trademark’ Covfefe

June 12th, 2017 Alexander No comments

On Wednesday, May 31st, at 12:06 a.m., President Donald Trump tweeted the following: “Despite the constant negative press covfefe”- and that was it. However, at 5:50 a.m., the tweet was deleted.

At 8:49 a.m., Kenneth L. Gallman applied at the USPTO to register “Covfefe Coffee” as a federal trademark, stating that he wants to use it to sell coffee.

Eight days after the tweet was posted, twenty-six “Covfefe” trademark applications had been filed. Some of these included clothing, beer, fragrance, and investment advice.

Trademark lawyers expected this to happen. These days, trending words from the news and pop culture are usually superseded by trademark applications. Three days after the Boston Marathon bombing, four applications had been filed for “Boston Strong.” Fifteen applications had been filed for “Nasty Woman”, the phrase Trump used to describe Hilary Clinton during a presidential debate, by the end of last year.

Mark H. Jaffe, a trademark attorney, stated that: “There’s this perception for certain people that this is somehow a money maker, this quote-unquote ‘trademarking it’. But that’s not exactly how it works.” The bulk of the rush-to-register applications are denied by the USPTO, resulting in a waste of time and money.

For more information see Law360.

Joanne Ludovici, a partner at McDermott Will & Emery LLP, said: “These types of trending phrase trademark filings are rarely productive uses of applicant resources because they rarely meet the requirements for federal registration.” In order to obtain a registration, the applicants must demonstrate a bona fide intent to use the term on a specific set of goods and services, which is something the majority of them lack. On top of this, the applicants must demonstrate that the term distinctively distinguishes the applicant as a source of goods.

An examiner stated that: “The public will not perceive the slogan as a trademark that identifies the source of applicant’s goods, but rather only as conveying an informational message: that the consumer or purchaser supports the ideas and messages conveyed by rallies and organizations dedicated to advancing women’s rights.”

For more information, see Law360.



IP Firms Changing Their Methods

June 5th, 2017 Alexander No comments

Intellectual property boutiques have acclimatized to increased prices and a deceleration in patent cases after two IP firms have closed down.

Professional state that several IP boutiques have effectively adjusted to the decrease in patent litigation after the passage of the American Invents Act in 2011. They have done this by instead focusing on USPTO proceedings developed by the government. For firms that specialize in patent prosecution, their method has been to cut rates by offering legal process outsourcing and alternative fee arrangements.

Fish & Richardson PC is the largest intellectual property boutique on the Law360 400. Finnegan Henderson Farabow Garrett & Dunner LLP come in second, and Knobbe Marten Olson & Bear LLP at third. In 2016, Fish & Richardson increased its number of attorneys by more than six percent.

Kenyon & Kenyon was no longer on the list after it merged with Andrews Kurth Kenyon LLP back in August.

While several intellectual property firms have gone out of business, others continue to expand.

PTAB

The 2011 American Invents Act developed new types of post-grant proceedings, offering a low-cost method for accused infringers and third parties to contest the validity of the patent at the USTPO’s Patent Trial and Appeal Board. These reviews have increased up to more than 1,700 petitions a year. This has also caused a decrease in district court patent litigation because the cases are being put on hold for IPRs. Consequently, intellectual property firms have lost their ability to get district court work.

However, creative intellectual property boutiques have offered for IPR actions, placing themselves as go-to Patent Trial and Appeal Board attorneys. Ray, the Stern Kessler lawyer, stated that the enactment of the AIA offered an opportunity for lawyers who had some prior USPTO experience to become experts in the new proceedings.

Dealing with Price Demands

Clients are increasingly seeking to cut down on their intellectual property budget after the economic downturn in 2008. According to Ray, recent case law and legislation have also added to this by decreasing the value of the patent. Accused infringers are not likely to pay for a license or settle because now it is cheaper and easier to invalidate patents through an IPR or other post-grant proceeding at the USPTO. Patent holders view this as being more difficult to realize a profit when litigation is not likely to result in settlement or licensing fees. As a result, favorable prices are crucial for firms because companies are doubting the value of a patent portfolio and hoping to get that portfolio for a lower price. Alternative fee structures in addition to legal process outsourcing assists in increasing efficiency and decreasing costs.

Discovering Different Venues

Intellectual property firms are looking for new industries and venues in which they can develop.

The Supreme Court’s ruling in TC Heartland v. Kraft Foods Brand means that district court patent suits will change geographically very soon. Additionally, the U.S. International Trade Commission has become a more attractive venue for patent owners seeking to stop imports of infringing items. ITC cases are different from district court litigation in that they are not stayed for PTAB proceedings. This essentially means that companies are able to receive an order banning imports faster.

For more information, see Law360.



Courts Restrict Where Patent Suits Can Be Filed

May 29th, 2017 Alexander No comments

Last week, the Supreme Court placed even more limitations on where patent owners can file infringement lawsuits. This decision will drastically change almost 30 years of settled practice, probably pushing numerous lawsuits out of the Eastern District of Texas.

The Supreme Court reversed a ruling that basically permitted patent holders to file suit anywhere a defendant makes sales. Critics stated that this encouraged forum shopping and an aggregation of suits in a few courts.

Justice Clarence Thomas stated in an opinion “We therefore hold that a domestic corporation ‘resides’ only in its state of incorporation for purposes of the patent venue state.”

In Fourco Glass Co. v. Transmirra Products Corp., the Supreme Court ruled that “resides” meant the place of incorporation. However, in 1990, the Federal Circuit implemented a broader rule, permitting patent lawsuits to be filed anywhere that a defendant does business.

After Kraft Foods Group Brands LLC sued TC Heartland for infringement, TC Heartland challenged the statute, encouraging the Supreme Court to overturn the Federal Circuit’s broad interpretation of the law.

A majority of people believed that if the Supreme Court ruled for TC Heartland, a bulk of patent suits would move to Delaware, where a lot of businesses are incorporated, and the Northern District of California, where there are many technology companies.

For more information, see Law360.



Five Important Case Rulings You Should Familiarize Yourself With

April 17th, 2017 Alexander No comments

1. Phigenix Inc. v. ImmunoGen Inc.

Those considering challenging a patent may have to think twice.

In January, the Federal Circuit ruled that a party unsatisfied with a Patent Trial and Appeal Board (PTAB) verdict may appeal; however, the party is still obligated to satisfy the constitutional requirements for instituting a proceeding in an Article III court.

Approximately 80 percent of PTAB cases are regarding infringement litigation. Although the parties challenging patents may bring cases to the board, the ruling essentially implies that the parties may not be able to appeal if they lose.

In addition, this ruling means that it is extremely imperative to obtain evidence of any contention among the parties on the record at the beginning of the case at the PTAB in order to safeguard the right to appeal the board’s verdict.

2. In re: Van Os

In this case, the Federal Circuit held that a pronouncement that a patent is invalid as obvious necessitates additional detail. It is not sufficient to state that it would be sound sense to combine prior art to arrive at a claimed invention. The Court stated that “such a conclusory assertion with no explanation is inadequate to support a finding that there would have been a motivation to combine.”

3. Secure Axcess LLC v. PNC Bank NA

In February, the Federal Circuit’s ruling in this case further restricted the amount of patents subject to review under the AIA’s covered business method (CBM) patent review program. Only patents containing a financial component in the claims are subject to review. The Court held that the Secure Axcess patent on web page authentication contains no financial components in tis claims, and thus the invention can be utilized by any company. It is irrelevant that the patent was generally asserted in opposition to banks. The patent should not have been administered under CBM review and then invalidated by the PTAB.

4. Mentor Graphics Corp. v. EVE_USA Inc.

In March, the Federal Circuit affirmed a $36 million award against Synopsys. This case was brought by Mentor Graphics regarding computer emulator technology. The Court ruled that after the Panduit analysis is done, the ensuing damages does not need to be allocated so that they only include the patented invention.

5. Personal Web Technologies LLC v. Apple Inc.

The Federal Circuit’s ruling in this case disapproved of the PTAB’s actions for insufficient justifications and remanded for further proceedings. The Court stated that subject to the Administrative Procedure Act, government entities must still produce “logical and rational” explanations for its verdicts so that courts can review them.

For more information, see Law360.



Unwired Planet LLC v. Apple Inc.

April 9th, 2017 Alexander No comments

This case, involving two huge tech companies, takes place in the U.S. District Court for the Northern District of California. Unwired Planet is seeking $33 million in damages from Apple for infringement of its wireless, location and voice recognition patents. Unwired Planet asserts that the $33 million is equitable in light of the fact that Apple is seeking $400 from Samsung in a similar proceeding. On the other hand, Apple contends that the damages it was seeking in the Samsung case is irrelevant to the case at bar. Judge Chhabria granted Apple’s motion in limine, agreeing with Apple.

Judge Chhabria ordered Unwired Planet to reveal documents in its infringement case with Samsung and Huawei Technologies Co. Ltd. Upon discovering this, Tracey B. Davies of Gibson Dunn, attorney for Apple, asserted that Unwired Planet’s witnesses were presenting figures “directly contrary” to information they offered during the case. In addition, Davies contended that Apple was not able to depose those involved in the case, thereby substantially prejudicing Apple. Although Judge Chhabria has not seen Apple’s sanction bid, his “preliminary reaction” is to reject it.

Furthermore, Judge Chhabria mentioned that he will not excuse jurors during jury selection just because they are Apple consumers.

For more information, see Law360.



Patent Glory Days Limited for East Texas

April 1st, 2017 Alexander No comments

East Texas has a long-standing reputation as a “patent hotspot.” Judges in the Eastern District of Texas are familiar with patents as they have ruled over numerous cases. Likewise, many potential jurors also have some type of experience with patents. In 1999, the amount of patent cases in East Texas was less than 100, but by 2007, this number skyrocketed to 369. By 2011, East Texas was recognized as a favorable patent location.

Patent holders favor the Eastern District of Texas because of the benefits and advantages that it offers for plaintiffs. To begin with, the discovery process happens fairly quickly and the judges in the district are less susceptible than judges in other districts to summary judgment motions. In addition, there are methods which permit the first parts of a suit to advance predictably without a lot of court involvement.

A high-profile case is putting East Texas at risk of losing its long-established dominance. This Monday, the Supreme Court will hear oral arguments in a case regarding where patent suits can be filed, specifically Section 1400(b) of the U.S. Code. This statute states that patent suits can be brought “in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.”

Kraft Foods Group Brands brought suit against TC Heartland LLC in the District of Delaware, alleging infringement of its concentrated liquid dispenser patents. After TC Heartland unsuccessfully moved the case to the Southern District of Indiana, it filed a petition for a writ of certiorari with the Supreme Court. TC Heartland asserts that this statute is allowing patent holders to forum-shop, leading to inequitable results. TC Heartland contends that patent suits should only be allowed be to be filed where a company is incorporated, citing Fourco Glass Co. v. Transmirra Products Corp.

However, if this were to happen, a large number of patent plaintiffs would be forced out of Texas and into Delaware, where numerous companies are incorporated. While a number of people think that limiting where patent suits can be filed would create impediments for nonpracticing entities and reduce the number of lawsuits, others believe that it would have little impact.

For more information, see Law360.

Categories: Uncategorized


Expert Testimony Has Little Impact on AIA Review

March 26th, 2017 Alexander No comments

Nearly one year has gone by since the new rules permitting patent owners to offer expert testimony in their responses to American Invents Act (AIA) review petitions have passed.  With the prior rules, petitioners were able to present expert testimony in their petition for review, but patent owners were not allowed to do the same.  Following complaints from patent owners, the USPTO passed the new rules permitting patent owners to offer expert testimony alongside their preliminary responses.

However, the new rules appear to have minimal effect on the result of the Patent Trial and Appeal Board determinations about whether to conduct reviews.  The statistics from RPX Corp. demonstrate that the PTAB has conducted reviews of challenged claims at virtually an identical rate in cases regardless of whether patents owners choose to include expert testimony along with their responses.  Regarding cases in which expert testimony was submitted alongside the response, review of the challenged claims occurred approximately 50 percent of the time.  Yet, review of some claims occurred in 13 percent of these cases.  With cases in which the patent owner did not submit expert testimony along with the initial response, review of challenged claims occurred 50 percent of the time, while review of some claims followed in 12 percent of these cases.

Because these rules are fairly new to patent owners, it is likely that they are still attempting to figure out how to use expert testimony to their advantage.  However, attorneys have said that patent owners can find holes in the petitioner’s case and then utilize expert testimony to elucidate the gap.

Considering that the changes are fairly new, we still have yet to see the effect of expert testimony on the overall outcome.

For more information, see Law360.

Categories: Uncategorized


Samsung Says Jury Was Right To Invalidate Imaging Patent

October 21st, 2016 Alexander No comments

Samsung Electronics Co. Ltd. recently argued that intellectual property firm, IP Holdings Ltd., failed to offer relevant expert testimony at trial to prove the patent was not invalid as obvious.

In its brief, Samsung fought Imperium IP Holdings Ltd.’s contention that the patent for an imaging device was not obvious and that jurors should not have found it invalid. That same jury, however, determined that Samsung had infringed two of Imperium’s other imaging patents.  As a result, Samsung has been hit with a nearly $21 million verdict.

U.S. District Judge Amos L. Mazzant III concluded that Samsung’s violation of certain claims in two Imperium patents was deliberate and that the jury’s damages was justified by the fact that Samsung knew of the patents but did not avoid infringement and made multiple misrepresentations under oath.

Judge Mazzant noted that one Samsung expert familiar with its tracking of Imperium’s patent portfolio testified that the smartphone giant did not perform an analysis of Imperium’s patents within the last 5 years and did not monitor Imperium’s previous litigation involving the patents-in-suit.

But this testimony was shown to be demonstratively false by evidence showing that Samsung did track and indeed even attempted to obtain Imperium’s patents for years before the patent holder’s lawsuit.

Samsung also failed to offer any evidence at trial that it had independently developed and/or acquired the camera technologies at issue in this case, and failed to produce other relevant documents as well, which should have been turned over during discovery.

Accordingly, Judge Mazzant wrote, “The court enhances damages to the maximum extent allowable under Section 284 given the totality of the circumstances.”

“Aside from suggesting that such evidence existed in the prior art, Samsung merely offered generalized ‘reasons’ to solve the alleged issues of size, cost, performance, and versatility associated with interfaces and image sensors,” Imperium argued. “These reasons would not have motivated a person of ordinary skill in the art to arrive at the invention claimed in the ’290 patent.”

For more information, see Law360.



Brief Plagiarism Suit Could Inspire Copycat Claims Against Attorneys

September 25th, 2016 Alexander No comments

Newegg Inc. claimed that Ezra Sutton, a New Jersey IP attorney, violated its copyright in an opening appeals brief filed in the Federal Circuit in September 2014.

Newegg was a defendant in a patent case along with Sutton’s client, Sakar International Inc., and the parties had discussed their respective strategies as a filing deadline approached.

After Sutton declined to join Newegg’s brief, Newegg shared a draft with Sutton in order to help him prepare. But a day before the deadline, and before Newegg filed its final version, Sutton filed his own brief, which was nearly identical to Newegg’s draft, including drafting errors. Newegg registered a copyright on the brief and filed suit.

Although this case may seem like an anomaly, experts say that hurling accusations of copied briefs and plagiarism at fellow lawyers may be a new weapon for vexatious attorneys.

U.S. District Judge Terry J. Hatter ruled that Sutton failed to establish a prima facie case that the copying constituted fair use. Further, “Given that Sutton copied most, if not all, of the substantive portions of the draft brief, and that Sutton’s use of the draft brief was not transformative, this factor weighs heavily in favor of Newegg,” the judge said.

While ethics bodies give wide leeway to “borrowing” legal writings, experts said this litigation could inspire other lawyers to register copyrights on their work.

“That is something that concerns me about this, and I think it would be a terrible use of judicial time to have to try to figure out who really wrote what in a brief, and a waste of lawyers’ time,” said one expert.

“A competent lawyer can say, ‘Here’s a perfectly good brief that gets us into court, gets our case started, so let’s use it,’ and that’s just being efficient,” he continued.

However, another expert focused on whether the lawyer who plagiarized had overbilled the client for underlying research, had tried to mislead the judge with overlapping arguments or filings, or failed to diligently represent the client.

Unless there is a serious breach, lawyers typically aren’t hit with disciplinary actions, because legal documents are rarely expected to be fully “original” works. Judges themselves often cut and paste extensively from previous decisions or from previous filings in the same matter.

“Lawyers have always lifted from briefs, but there has to be a line somewhere between a few paragraphs and a wholesale lifting of a brief,” another expert said.

For more information, see Law360.



Apple Hit With $22M Verdict In Acacia Patent Trial

September 18th, 2016 Alexander No comments

A jury recently found that Apple Inc.’s iPhones and iPads infringe a patent on wireless communication technology owned by Cellular Communications Equipment LLC, a subsidiary of major patent licensing firm Acacia Research Corp.  The jury ordered Apple to pay $22.1 million in damages.

That patent was originally issued to a Nokia Corp. engineer and then acquired by Cellular Communications Equipment. It covers technology for managing the resources used to send data over a communications network and increasing the efficiency of communicating.

Apple argued that it does not infringe and that the patents are invalid as obvious or because the applicant omitted inventors from the patent.

In addition to Apple, the suit named as defendants the mobile carriers that resell Apple devices and configure them to make them compatible with their networks: AT&T Mobility LLC, Verizon Wireless, Sprint Solutions Inc., Boost Mobile LLC and T-Mobile USA Inc.

However, U.S. Magistrate Judge K. Nicole Mitchell granted the carrier’s motion to sever the claims against them and stay them until completion of the trial against Apple, finding that the claims are peripheral to the claims against Apple.

The carriers can only be liable for patent infringement if Apple is found to infringe, but if Apple were found liable and ordered to pay damages, Cellular Communications Equipment cannot recover damages from the carriers because it is barred from receiving a double recovery for the same sales.

For more information, see Law360.