Tue, 21 Mar 2017 21:11:40 +0000Julie 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). [...]
Thu, 09 Mar 2017 23:27:16 +0000Elizabeth 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. https://commons.wikimedia.org/wiki/File:Portland_International_Airport_security_check.jpg.The author of the photograph in no way endorses me or my use of this work. [...]
Sat, 25 Feb 2017 14:01:47 +0000Julie 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. [...]
Fri, 10 Feb 2017 23:30:48 +0000
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??
Fri, 03 Feb 2017 00:34:21 +0000Alyssa 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. [...]
Thu, 12 Jan 2017 18:47:55 +0000
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.
Mon, 09 Jan 2017 17:07:13 +0000
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.
Sat, 07 Jan 2017 14:25:56 +0000Elizabeth 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 available damages for design pate[...]
Mon, 31 Oct 2016 16:24:01 +0000
What do you consider a work-appropriate Halloween costume? If you work at Intellectual Property Law firm Dunlap Codding, it’s a Halloween Design Patent! Congrats to Lori Martin for her creative use of U.S. Design Patent No. D169,265. Happy Halloween!