IP Intelligence

IP Intelligence

Insight on Intellectual Property

Federal Circuit affirms PTAB in first IPR final written decision appeal

The Federal Circuit recently issued its first ruling on an appeal from an inter partes review (IPR) final written decision, In re Cuozzo Speed Technologies. In doing so, the court affirmed the USPTO’s Patent Trial and Appeal Board (PTAB) on two critical issues, offering further clarity for Patent Office litigants. Continue Reading

Will New IEEE Standards Policy Devalue Standards Essential Patents?

On February 8, 2015, the Institute of Electrical and Electronics Engineers (IEEE) adopted a new patent policy for standards-essential patents (SEPs) in IEEE standards. This comes in the midst of rapid developments in the high tech industry, where courts and other authorities have been attempting to define the rights of owners of SEPs. The new IEEE policy may reduce the licensing value of patents that are essential to implement a product compliant with future IEEE standards. However, there is reason to believe that the net effect on SEP patent valuation may be small.

By way of background, a SEP is a patent that covers a technical standard set by a standards setting organization such as the IEEE. Such technical standards define specifications by which companies can comply to produce products, or employ processes, that allow for uniformity in the marketplace. Screw thread sizes and railroad track spacing are two examples of early standards. Today, standards are directed to much more complex technologies, such as quality management (ISO 9001), WiFi (IEEE 802.11) and Bluetooth (IEEE 802.15.1). Read More >>

Does ‘Raging Bull’ Deliver Knockout to Patent Laches Defense?

Under Federal Circuit case law, patent-infringement defendants may assert the laches defense – an equitable defense barring claims brought after an unreasonable delay. But the doctrine will soon square off in the Federal Circuit against a heavy hitter: “Raging Bull.”

In 2014, the Supreme Court decided a copyright case about the popular boxing movie “Raging Bull.” There, the Court struck laches as an available copyright infringement defense. Now, the stage is set for the full Federal Circuit to revisit the laches doctrine in the patent arena. Continue Reading

Trademark “tacking” questions should go to a jury, SCOTUS rules

The Supreme Court issued its first substantive trademark decision of the current term yesterday in Hana Financial, Inc. v. Hana Bank. The district court had charged the jury with determining whether Hana Bank’s original mark, HANA OVERSEAS KOREAN CLUB, had the same commercial impression as its revised mark, HANA BANK. The jury found that it did, and the Ninth Circuit affirmed the district court’s decision to have the jury determine the question.

The Supreme Court affirmed in a unanimous opinion authored by Justice Sotomayor: “Application of a test that relies upon an ordinary consumer’s understanding of the impression that a mark conveys falls comfortably within the ken of a jury.” The decision overrules precedent in the Sixth and Federal Circuits that had treated tacking as a question of law. Hana Financial’s four arguments, and their disposition by the Supreme Court, were as follows: Continue Reading

Trademark practice tip: Request Interlocutory Attorney attendance at discovery/settlement conferences in opposition proceedings to avoid costs of motions to strike affirmative defenses

In trademark opposition proceedings the affirmative defense of failure to state a claim is commonly pleaded, yet it is often an inappropriate affirmative defense. Other affirmative defenses that are severely limited in opposition proceedings include laches (consideration of this affirmative defense is taken as of the time an application is published for opposition purposes, not from the time of knowledge of an applicant’s use), waiver and estoppel (which turn on the conduct of a plaintiff during the time of prosecution of the application and must have sufficient facts pled to support them), and fraud (which must have sufficient facts pled in support of that affirmative defense).

Instead of a motion to strike, an opposer in an opposition proceeding should consider the cost-effective method of requesting that the Interlocutory Attorney assigned to the case by the Trademark Trial and Appeal Board participate in the mandatory discovery/settlement conference, as the Interlocutory Attorney has the power to strike affirmative defenses. Continue Reading

USPTO Announces New Lower Fee Schedule for Trademark Applications

On January 17, 2015, the United States Trademark Office implemented a reduced fee schedule for newly filed applications. The Trademark Office has introduced an additional category of applications called the TEAS Reduced Fee, or TEAS RF, application. Previously, the Trademark Office allowed applicants to file only two types of applications: TEAS PLUS or a regular TEAS application. The TEAS PLUS application required that not only would all correspondence and actions be handled electronically using the Trademark Office’s online system, but also that the applicant choose a standard identification of goods from the U.S. Acceptable Identification of Goods and Services Manual (“ID Manual”). Continue Reading

Trademark Trends: Back-to-Back Arguments in Trademark Cases at SCOTUS

The Supreme Court heard oral argument in trademark cases on consecutive days this month. On December 2, 2014, the issue of whether a finding by the Trademark Trial and Appeal Board (TTAB) of likelihood of confusion precludes the issue from being re-litigated in a trademark infringement action was presented in B&B Hardware, Inc. v. Hargis Industries, Inc. The following day, the Justices turned to the issue of whether trademark tacking is a question of law or fact in Hana Financial, Inc. v. Hana Bank.

B&B Hardware is the culmination of a sixteen-year dispute between B&B’s SEALTIGHT mark for leak-proof screws and bolts, and Hargis’s SEALTITE mark for construction screws. The TTAB found a likelihood of confusion between Hargis’s SEALTITE and B&B’s senior SEALTIGHT mark, and denied Hargis’s application to register SEALTITE on that basis. In a later trademark infringement litigation, Hargis won a jury verdict of noninfringement, and B&B appealed on the basis that the TTAB’s finding of likelihood of confusion should have been issue-preclusive. The Eighth Circuit affirmed that the district court did not err in declining to defer to the TTAB determination and excluding the TTAB opinion from trial.

Continue Reading

USPTO Issues “2014 Interim Guidance on Patent Subject Matter Eligibility”

On December 15, 2014, the USPTO published a document titled “2014 Interim Guidance on Patent Subject Matter Eligibility” (Interim Guidance). The new Interim Guidance follows the previous preliminary examination instructions issued on June 25, 2014, in view of CLS v. Alice (2014), and was published as a notice for comments and may therefore be updated depending on public feedback.[1] The new Interim Guidance combines the earlier guidance for claims reciting abstract ideas with the March 4, 2014, guidance for claims reciting natural phenomena and laws of nature.[2]

Under the new Interim Guidance, examiners are instructed to first determine whether the claim is directed to one of the four statutory categories of 35 USC §101 (i.e., process, machine, manufacture, or composition of matter). If so, the examiner is instructed to apply a two-part patent-eligibility analysis, as articulated by the Supreme Court in Alice. In sum, examiners are instructed to apply the two-part analysis to the broadest reasonable interpretation of the claims when analyzed as a whole. A flowchart titled “Subject Matter Eligibility Test for Products and Processes” is provided for examiners, and a copy is set forth below. Continue Reading

Don’t Miss the Window for Post-Grant Review: Monitor Your Competitors by Creating Alert Systems

The U.S. Patent and Trademark Office has new and popular procedures for challenging the validity of (in other words, killing) a competitor’s patent. The most powerful procedure, a Post-Grant Review (PGR), must be filed within nine months of the grant or “issue date” of any patent with a priority date of March 16, 2013, or later. This requires businesses to monitor their competitors’ patents and patent applications so that they avoid missing the nine-month window.

PGRs provide unique advantages that are not available in litigation or other post-grant proceedings. For example, the PGR process allows parties to challenge the patent on almost any ground that is a condition for patentability, including novelty, nonobviousness, definiteness, adequate written description, enablement and patentable subject matter; such a range of grounds is not available in any other single review proceeding. Further, the PGR process is advantageous because in it a patent has no presumption of validity as it would in a federal district court action. And the conventional wisdom is that the patent office board hearing post-grant challenges has been more favorable to the challengers. A PGR proceeding also usually costs much less than district court litigation and can result in a final decision on a much faster time line. Finally, the PGR process can force patentees to amend their claims in a way that opens up the door for challengers to acquire intervening rights, which can help drastically limit future infringement claims and damages. Continue Reading

All Native Advertising is Not Equal: Why that Matters Under the First Amendment and Why it Should Matter to the FTC – Part V

In this five part series, originally published in the Summer 2014 edition of the Media Law Resource Center Bulletin,[1] we take an in-depth look at the native advertising phenomenon and the legal issues surrounding the practice.  After canvassing the many faces of native advertising and the applicable law, the series ultimately examines the pervasive assumption that all native advertising is, and should be regulated as, “commercial speech.”  This assumption presumes that all native advertising is equal under the eyes of the law, and we come to the conclusion that it probably isn’t. Native advertising that is closer to pure content than pure commercial speech may deserve greater or even full First Amendment protection, which would carry significant implications for government regulation[2].

Part 1: Introduction to Native Advertising

Part 2: Early Native Advertising and the Current FTC Regulatory Landscape

Part 3: Evolution of the Commercial Speech Doctrine

Part 4: Distinguishing Commercial versus Non-Commercial Speech

Part 5 applies the commercial speech doctrine to native advertising and asks whether certain forms of native may be protected by the First Amendment.


Not all Native Advertising May Be Commercial Speech under the First Amendment

If there is one thing clear from the case law, it is that the commercial speech analysis under the First Amendment is a fact intensive one that does not clearly lend itself to bright lines, especially when dealing with mixed commercial and noncommercial speech. Native advertising also does not lend itself to a single categorization as it can take a number of forms. See Part I.A., supra. As discussed below, the appropriate level of First Amendment protection for native advertising as commercial or noncommercial speech should turn on the nature of the communication as opposed to a catch-all net. [3]

Continue Reading