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PHOSITA :: an IP Blog!


2017 FIRST Robotics Competition

Tue, 04 Apr 2017 11:24:25 +0000

Jeremy McKinney It is the end of the Oklahoma Regionals of the FIRST Robotics Competition (FRC for short), and as I sit here in the “pit” reflecting on this year’s robotics season I feel privileged and honored to have been a small part of team 5578, the Metro Mechanical Monsters from Oklahoma City, OK.For those who may not be familiar with FRC, FIRST (For Inspiration and Recognition of Science and Technology) is a non-profit organization formed by Dean Kamen (inventor of the Segway) to introduce and promote science, engineering, and technology skills to school-age young people. FRC is the top tier of the FIRST Robotics programs, with high school aged students designing and building competitive robots over a six-week period. Each year there is a unique game with a number of challenges that the students must analyze, then decide which challenges they want to tackle and the requirements for doing so, then design, build, and test a robot that accomplishes those goals. At the FRC level, all the teams get a “kit of parts” each year, but it is far from a "build your own robot kit.” Instead, the kit consists of materials common to most of the robots such as control system components, a few motors and motor controllers, some sensors and switches, and various other bits and pieces to get the team started. The team must then acquire or fabricate everything else they need to build their robot. My firm, Dunlap Codding, has been a sponsor of the FRC Oklahoma Regional competition for the last ten years. This is the third year I have had the privilege of working with the Mechanical Monsters, and I couldn’t be more proud of what they have accomplished. For the last couple of years, we have hacked together what could be loosely referred to as “robots” that moved about (most of the time), but were not great at accomplishing the assigned game tasks. As you’d expect, we did not place highly in competition, but we did have fun and we learned what not to do, mostly by doing things wrong. This year, the students wisely enlisted the help of a more experienced team who graciously included them in their initial strategy session where both teams spent “kickoff day” analyzing this year’s game, talking strategy, and forming a plan for the six-week build period. The students and coaches then came together to design, build, test, re-design, re-build, test again, re-design... well, you get the idea. What inspires me most about this group, is they kept working through the problems that surfaced over, and over, and over again, right up to the last morning of competition, in fact, to field a robot that not only worked but placed 16th overall out of 61 teams in the Oklahoma Regional. While doing well in the competition was an accomplishment that was celebrated by the team, and rightfully so, it is not the focus of FRC or the coaches and mentors of the Mechanical Monsters. Building a robot and participating in competitions are merely vehicles designed to introduce students to engineering, science, and technology and get them more interested in possibly pursuing a STEM career. The Mechanical Monsters have already shown an interest in STEM, they are all students of the Metro Technology Center STEM Academy. As participants in the STEM Academy, students leave their home schools to attend the STEM Academy half the day to take classes such as advanced math, chemistry, physics, and pre-engineering—classes that are not available at their home schools. Participation in the FRC gives these students the opportunity to apply many of the things they learn in class in a real-world scenario where they gain invaluable hands-on experience. It is the goal of the coaches, mentors, and instructors at the STEM Academy that the students’ experiences in FRC will enhance what they have learned and solidify their desire to pursue STEM further. Only time will tell if t[...]

A Patent Laches Defense No More

Tue, 21 Mar 2017 21:11:40 +0000

Julie Langdon  Today, the Supreme Court vacated a prior Federal Circuit decision when it decided that laches cannot be used as a defense against a claim for damages brought within the Patent Act’s six-year limitation of damages set forth in 35 U.S.C. § 286. SCA Hygiene Products AB et al. v. First Quality Baby Products LLC, 580 U. S. ____ (2017).  This decision stems from a dispute where the Plaintiff, SCA Hygiene Products, waited almost seven years between providing notice of the potential infringement to the Defendant, First Quality,  and filing suit against First Quality; however, during the interim, the damages continued to accrue.  The District Court reasoned that SCA Hygiene was time barred by laches because it unreasonably delayed in bringing its suit, and the Federal Circuit affirmed that decision.  Applying similar logic to that in its opinion in Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U. S. ___ (2014), the Supreme Court held that as long as the damages incurred within the period of limitations set forth by the statute, the equitable defense of laches does not apply. Specifically, the Court rejected the Federal Circuit’s reasoning that the Patent Act has codified a laches defense, and instead decided that by inserting a statute of limitations, Congress intended to preclude laches, and allow the recovery of damages for infringement committed within six years of filing the claim.   The Supreme Court also rejected First Quality’s (and the Federal Circuit’s) position that courts for over a decade had relied on laches to reject claims for damages in patent cases. In its review of the same cases, the Supreme Court stated that the opposite was true – laches was not to be used to bar a claim for damages within the time set forth by Congress.  In closing, the Supreme Court noted the many policy reasons for laches set forth by both First Quality and the amici but indicated that policy alone was not enough to turn over Congress.  The Supreme Court stated, “the doctrine of equitable estoppel provides protection against some of the problems that First Quality highlights, namely, unscrupulous patentees inducing potential targets of infringement suits to invest in the production of arguably infringing products.”  580 U. S., at ____ (slip op., at 16).  Thus, using the Court’s guidance in Petrella, there may still be opportunities to bar the claim for infringement and all associated remedies based on the doctrine of estoppel, specifically in situations such as when the “[patent] owner engages in intentionally misleading representations concerning his abstention from suit, and the alleged infringer detrimentally relies on the [patent] owner's deception.”  572 U. S., at ___ (slip op., at 19). [...]

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Trademark Security Check Point – Draining the Swamp with Random Audits of Trademark Use

Thu, 09 Mar 2017 23:27:16 +0000

Elizabeth Isaac Despite flying with TSA pre-check, random checks in airport security lines seem to be a thing for me. Just last week, a TSA officer randomly wiped down all of my electronics with what looked like a fat piece of litmus paper and then stuck the paper into a futuristic machine for further analysis. Lucky for me, I carry honest electronics.On March 21, 2017, the USPTO will begin randomly checking declarations of use, not looking to find what trademarks owners possess but instead looking to crack down on what trademark owners are lacking. The USPTO recently published a final rule (82 Fed. Reg. 6259) establishing a random audit program to ensure that trademark owners attempting to renew their trademark registrations are indeed using their trademarks in connection with every good and/or service in what may be a laundry list of goods or services in a single class. So, if you own a trademark registration that identifies multiple goods or services in a single class, be prepared to submit additional evidence of your mark being used in connection with any one of the goods or services identified in your registration.Specifically, ten percent of Section 8 and 71 Declarations of Use will be subject to the audit. A Section 8 Declaration is a statement made to the USPTO averring that your federally registered trademark has been in use continuously for a period of five years, and a Section 71 Declaration is essentially the same thing but applies to applications generally filed by international applicants under the Madrid Protocol.Under the current rules, upon filing a Section 8 or 71 Declaration of Use, a registrant is required to submit a specimen showing evidence of the mark being used with at least one good or service in each class identified in the application. This has not changed. However, for a random ten percent of such registrants, the USPTO will next issue an Office Action requiring additional proof for particular goods or services identified in the registration and not already accounted for.  Here comes the random pat down. Registrants will have six months to respond by either submitting evidence of use or simply deleting the goods and services from the registration.The rule was prompted by a pilot program, during which fifty-one percent of the registrations pulled at a security checkpoint for random screening were unable to submit evidence of commercial use for the additional goods and services required. In particular, the USPTO hopes to whittle down registrations filed under the Madrid Protocol, which generally contain a much broader listing of goods and services than do applications filed with the USPTO. The Office also wants to drain the registry of registrations of goods and services that are not in fact being offered with a particular brand name. After all, trademark rights are based on using the mark in commerce.   In sum, you own a trademark registration for LIZZIE BOO for use in connection with shirts, shorts, overalls, jackets, shoes, and hats, all in class 25. You submit a Declaration of Use showing evidence of shirts. Do not be surprised if the USPTO randomly pulls you aside and requires you to submit additional evidence of those overalls. If LIZZIE BOO overalls have been discontinued, well then, drain them from the registration. Photo Cred: M.O. Stevens. Creative Commons Attribution 3.0 Unported license. author of the photograph in no way endorses me or my use of this work.  [...]

The Supreme Court Limits Overseas Patent Infringement

Sat, 25 Feb 2017 14:01:47 +0000

Julie L. Langdon On Wednesday, the Supreme Court ruled that the Federal Circuit got it wrong on the reach of overseas patent infringement, and opined that providing one commodity from the United States for incorporation into a multi-component product is not enough for a finding of overseas-based patent infringement.  Life Technologies Corp. v. Promega Corp., No. 14-1538 (2017).  The ruling deals with 35 U.S.C. § 271(f) which states:(1)   Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.(Emphasis added.)  The purpose of § 271(f) was to prevent companies from shipping all of the components of a patented invention outside the United States and reassembling those products offshore in an effort to avoid infringement of U.S. patents.  The Supreme Court opinion stems from a lawsuit in which Promega accused Life Technologies of selling infringing products overseas that were not covered by the patent license agreement between the parties.  The license agreement provided Life Technologies the right to sell a genetic testing kit which included a primer mix, a polymerase, nucleotides, buffer for amplification and control DNA.  Life Technologies produced the allegedly infringing kits in the United Kingdom, and the components of the kits were also produced in the United Kingdom, except for the polymerase, which was produced in the United States, and sent to the United Kingdom to be incorporated in the kit.  Promega asserted that by supplying the polymerase from the United States, Life Technologies was infringing the licensed patent under 35 U.S.C. § 271(f). The District Court disagreed, Promega appealed, and the Federal Circuit reversed the District Court, which led the Supreme Court to grant certiorari to determine whether a party that supplies, from the United States, a single component of a multicomponent invention for manufacture abroad can be held liable for infringement under § 271(f)(1).   In rejecting the Federal Circuit’s reasoning that a single component is enough for a finding of infringement if it is a sufficiently important component of the invention, the Supreme Court ruled that the language “all or a substantial portion of the components” must be more than one component when such as here, all the other parts of the single commodity are supplied from abroad.  The Supreme Court also stated that the term “substantial” in the statute “has a quantitative, not a qualitative, meaning.” While the Supreme Court’s ruling addresses the supply of “one component” of a multi-component product, it does not go deeper than that.  Thus, the required number of components to reach a finding of patent infringement of a multi-component product is still unknown, and will be left to the lower courts and juries to determine, which may prove to be difficult.  Judge and juries will need to determine how many components in relation to total number of components in the product are enough for a finding of infringement.   [...]

Friday Fun (for Associates) - Unusual Order in Patent Infringement Case

Fri, 10 Feb 2017 23:30:48 +0000

Ann Robl

Move over partners! In X One’s patent infringement case against Uber Technologies (CAND 5-16-cv-06050), Judge Koh has given the associates on the case a chance to argue a motion. Her order of February 3, 2017 states that “the Court and parties had difficulty setting a date for the hearing...because of the schedules of the Court and lead Plaintiff’s counsel.” Though “the Court often finds matters appropriate for resolution without oral argument” “to encourage the parties to give associates opportunities to argue substantive motions, the Court will guarantee a hearing on the dispositive motions if both parties allow associates who graduated from law school in 2009 or later to argue such motions.” 

How often do you see that?? 

Hat tip to Docket Navigator and Evan Talley for noticing this order.


Where to Search Decisions on Petitions to the USPTO

Fri, 03 Feb 2017 00:34:21 +0000

Alyssa Novak As any attorney knows, when it comes time to make an argument, it is helpful to know how similar cases have been handled. For case law, there are many easy-to-navigate legal databases that allow term searches or searches using regular language. However, the same is not true for searching decisions by the USPTO on petitions. The following is a list of free sources for accessing petition decisions, one of which is word-searchable.USPTO Website: Image File Wrapper (IFW) Petition Decisions can be found on the USPTO’s bulk data website page in the form of 727 1000-page books that are grouped by date from January 2003 to April 2012. Each book may be downloaded as a PDF file consisting of scanned images. These decisions can only be made text-searchable using text character recognition tools.Reed Tech Website: Reed Tech and the USPTO have an agreement to make selected USPTO products available to the public at no charge. Reed Tech’s petition decisions web page is organized in the same 1000-page groupings as the USPTO’s bulk data webpage; however, the decisions are also organized by an eight digit patent application number (two digit series code plus a six digit application number) in ascending order. Similar to the USPTO’s bulk data files, downloaded Reed Tech files are not text-searchable.Google Books: Google obtained the majority of the bulk data set from the USPTO. Although the entire database of petitions is not text searchable, each individual book is searchable.  However, please note that the Google Book data sets are no longer being updated as of 2015.________Photo from USPTO Office of Petitions.  [...]

Update on P3 Program

Thu, 12 Jan 2017 18:47:55 +0000

Ann Robl

The Post-Prosecution Pilot (“P3”) Program closed today, January 12, at the end of its six-month run.  According to the USPTO, all of the technology centers met their limit of 200 requests, except for TC1600 (Biotechnology and Organic Chemistry), which had 141.

As previously discussed on PHOSITA, the P3 Program was an option for patent applicants who receive a rejection in a final Office Action. Like the Pre-Appeal Brief Conference Pilot Program, in P3 the applicant filed a short response (no more than five pages) to be considered by a panel of three examiners. The applicant also could file an optional non-broadening claim amendment. However, unlike other programs, P3 allowed the applicant to make a twenty minute oral presentation to the examiner panel. Also, the panel’s decision included an explanation supporting its decision, rather than the simple check box of the Pre-Appeal Brief Conference decisions.

The USPTO says that it is evaluating the results of the pilot to determine next steps. I would like to see them keep the program, as more information from the Examiner Panel has the potential to be helpful.


Legal Guide for Bloggers

Mon, 09 Jan 2017 17:07:13 +0000

Douglas J. Sorocco

This is a reprise of a popular blog post published some years ago.

The EFF has released a Legal Guide for Bloggers. Included in this guide are sections on defamation, reporter's privilege, public records, and workplace blogging. But, the best section, in my mind, was Bloggers' FAQ: Intellectual Property. This section covers copying of other blogs, government documents, Creative Commons, licensing of comments, deep linking, copying of images, the DMCA, trademarks, and right of publicity. If you have any questions about intellectual property and blogging, check it out.


Samsung v. Apple and Design Patent Infringement Damages

Sat, 07 Jan 2017 14:25:56 +0000

Elizabeth Isaac The Supreme Court issued a unanimous opinion in the Samsung Electronics Co., Ltd. v. Apple, Inc. case on December 6, 2016, concerning apportionment of design patent damages under 35 U.S.C. § 289. The Court answered the limited question of whether, in the case of a multicomponent product (e.g., a smartphone), the relevant “article of manufacture” must always be the end product sold to the consumer or whether it can also be a component of that product. Unlike the reasonable royalty remedy for infringing utility patents under 35 U.S.C. § 284, the design patent remedy under § 289 provides that an infringer “shall be liable to the owner to the extent of his total profits” for selling an “article of manufacture” that infringes a design patent.To Apple’s chagrin and Samsung’s delight, the Supreme Court held that damages could be narrowed to the profits associated with individual components, rather than profits for the entire end product.In overturning a nearly $400 million verdict against Samsung, the Court rejected the Federal Circuit’s determination that the relevant “article of manufacture” for calculating damages under § 298 must be the entire smartphone because the separate components that make up a smartphone are not available for consumer purchase. Apple’s design patents at issue included (1) a front face with rounded corners, (2) a rectangular face with rounded corners and a raised rim, and (3) a grid of colorful icons, drawings of which are reproduced above.In reaching its conclusion, the Supreme Court performed a textual analysis of § 298 and reasoned that the ordinary definition of the term “article of manufacture” is broad enough to include a component of a product. Because an article of manufacture is simply a thing made by hand or machine, “[a] component of a product, no less than the product itself, is a thing made by hand or machine.” The Court went on to square its reading of an article of manufacture in § 298 with the language in 35 USC § 171(a) (which defines design patent subject-matter eligibility) and with a hat tip to Application of Zahn, 617 F. 2d 261 (CCPA 1980), reasoning that “the statute is not limited to designs for complete articles.”As such, the Court shed light on Step 1 of the two-part step for calculating damages under § 298:                Step 1: Identify the article of manufacture.                Step 2: Calculate the infringer’s total profit made on that article of manufacture.However, the Court (“in the absence of adequate briefing”) punted on the more cumbersome and arguably more consequential Step 1, which has been remanded for the lower court to hash out and develop a test for determining whether the relevant article or manufacture in this case is the entire smartphone or a particular smart phone component. So, Samsung is still on the hook for design patent infringement, but the check it writes to Apple could be less after the litigants head back to the trial court.In the past, traditional utility patent prosecutors have frequently overlooked design patents as an afterthought or an alternative strategy where utility patent protection proved unattainable or cost prohibitive. Heads lifted with the Samsung/Apple litigation as the media shed greater light on prospects of obtaining total profits for the sale of a product infringing a design patent.  While I still believe that design patents are very valuable components in a client’s intellectual property portfolio, this decision could reduce the availa[...]

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Federal Circuit Holds PTAB exceeded Statutory Authority in using the Broader “Incidental” or “Complementary” Definition of Covered Business Method

Wed, 21 Dec 2016 14:06:13 +0000

Jeremy McKinney In Unwired Planet v. Google, the Federal Circuit vacated a PTAB Covered Business Method (CBM) review decision holding that the PTO’s definition of a “covered business method” was “not in accordance with the law.”Covered Business Method review (CBM) is one of a group of post-issuance administrative review procedures created as part of the America Invents Act (AIA). CBM review allows certain patents to be challenged on almost any patentability ground, including subject matter eligibility (under 35 U.S.C. § 101). The term “covered business method” is particularly defined to include any patent “that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” AIA § 18(d)(1).In its rules implementing the statute, the PTO did not further define or explain the CBM definition, however, in a policy statement, the PTO asserted that the program applies to patents that are “incidental to a financial activity, or complementary to a financial activity.” It is under this more expansive definition that the PTAB has been instituting many CBM reviews. In Unwired Planet v. Google, the Federal Circuit rejected this more far-reaching definition as contrary to the statute.Unwired’s patent claims a method of using a privacy policy associated with a wireless device to determine if applications are permitted to access the wireless device’s location information. The PTAB held the claims were a CBM by finding that businesses may want “to know a wireless device is in its area so relevant advertising may be transmitted.” The PTAB’s findings were based on the patent’s written description. The PTAB also found the patent claims to be invalid in the CBM under 35 U.S.C. § 101 as being directed to unpatentable subject matter. On appeal, however, the Federal Circuit found the required “financial product or service” link too tenuous and reversed the PTAB’s determination that the patent claims were a CBM. The court explained:The Board’s application of the “incidental to” and “complementary to” language from the PTO policy statement instead of the statutory definition renders superfluous the limits Congress placed on the definition of a CBM patent.This is great news for Unwired because the challenges based on § 101 are not allowed in inter partes review. In a broader sense, this decision by the Federal Circuit is important for two reasons. 1) The current definition of CBM under which the PTO has been instituting CBM review is too broad, and the Court gave no deference to the “policy statement” made by the PTO in its notice of the final rules. However, the Court does implicitly suggest that implementation of a more thorough definition in the CFR rules may be given deference. 2) While the decision to initiate a CBM is not appealable, in the present case the Federal Circuit held that it still has jurisdiction to review the CBM initiation question on appeal. In Versata, the Federal Circuit held that the initial question of whether a patent is a CBM patent may be reviewed on appeal. Despite the statutory language and the intervening Supreme Court decision in Cuozzo, the present case shows that the Federal Circuit is sticking to their guns and will continue to review CBM initiation questions on appeal. [...]