Blacklist Complaints: A Novel Tool Against Bad-Faith Trademark Applicants in China

Bad-faith trademark filings can pose a painful obstacle to brand owners’ attempts to register and enforce trademark rights in China. Traditionally, trademark owners have needed to file a broad range of defensive applications, oppose dozens of bad-faith filings as they are published, and/or undertake massive invalidation campaigns against existing bad-faith registrations. These actions are resource-intensive but necessary to keep the Chinese trademark register clear of bad-faith filers.

Importantly, a new process is available to assist rights owners. The China National Intellectual Property Administration (CNIPA) has recently made available a “blacklist complaint” procedure. Rights owners identify bad-faith filers, and the Chinese trademark office will more closely scrutinize suspect applications and registrations at each of the examination, opposition and appeal stages of the trademark life cycle. This is an informal process, not expressly authorized by the Chinese trademark law and yet a powerful tool by which rights owners can inexpensively and effectively flag infringers’ trademark filings for closer review. Continue Reading

For a Few Facts More

After TC Heartland tightened up patent venue, Judge Albright’s local patent rules drew plaintiffs wanting a quick courtroom shootout. According to Lex Machina and IP Law360, Judge Albright, by himself, picked up 793 patent litigations last year in the Western District of Texas (WDTex). In just a year, Judge Albright accumulated 20 percent of newly-filed patent litigations nationwide. A recent case shows, though, that not every plaintiff who wants to litigate in West Texas is entitled to stay there. Pleading key venue facts “on information and belief” will weaken an attempt to hold venue. Bootstrapping via pendent non-patent claims is also insufficient. Defendants who apply exacting TC Heartland analysis can prevail, and get a case dismissed outright for improper venue.

Plaintiff Akurate Dynamics LLC (Akurate) alleged, on information and belief, that defendant Carlisle Fluid Technologies, Inc. (Carlisle) infringed Akurate’s patent by conducting a product demonstration within WDTex. Akurate alleged not only patent infringement, but also breach of federal and Texas trade secrets statutes, plus breach of contract arising out of a nondisclosure agreement. The technology involved “spraying machines.” Continue Reading

Use of Infringement Disclaimer to Preserve Favorable PTAB Decision

In a recent precedential opinion, ABS Global Inc. v. Cytonome/ST, LLC, 984 F.3d 1017 (Fed. Cir. 2021), the Federal Circuit held that the disclaimer of a right to appeal a district court’s summary judgment of non-infringement mooted a petitioner’s appeal of the Patent Trial and Appeal Board’s (PTAB) final written decision in an inter partes review (IPR) proceeding.

In 2017, Cytonome sued ABS alleging infringement of Cytonome’s ‘161 Patent. Several months later, ABS filed a petition for inter partes review of all claims of the ‘161 Patent. After instituting review, the PTAB issued a final written decision invalidating some, but notably not all, claims of the ‘161 Patent. Thereafter, in the district court litigation, the court granted ABS’s motion for summary judgment of non-infringement of the ‘161 Patent. About two months later, ABS appealed the PTAB’s final written decision and filed its opening brief in support thereof. Next, Cytonome filed a response brief, which included an affidavit from Cytonome’s counsel that Cytonome “has elected not to pursue an appeal of the district court’s finding of non-infringement as to the ‘161 patent and hereby disclaims such an appeal.” The issue before the Federal Circuit, as raised by Cytonome in its response brief, was whether its disclaimer of its right to appeal the district court’s summary judgment non-infringement ruling mooted ABS’s appeal of the PTAB’s final written decision. Continue Reading

Looking for Clarification on Means-Plus-Function Claiming? Here Are 4 Things You Should Know

In Rain Computing, Inc. v. Samsung Elecs. Co., No. 2020-1646 (Fed. Cir. Mar. 2, 2021), the Federal Circuit reversed a judgment of non-invalidity and in doing so provided clarity to its post-Williamson (792 F.3d 1339 (Fed. Cir. 2015)) means-plus-function case law and the required disclosure of structure to avoid an indefiniteness issue. This guidance is especially useful to patent owners and, in particular, those in the computer fields, as the decision addresses the claim term “module” in a § 112 ¶ 6 (now § 112(f)) analysis, and the accompanying disclosure of structure required when the function is performed by a general-purpose computer.

The claims at issue in Rain concerned “delivering software application packages to a client terminal in a network based on user demands configured to control access.” The district court determined one of the terms, “user identification module,” to be a means-plus-function term subject to § 112 ¶ 6 treatment but not indefinite. Based on the parties’ joint stipulation, the district court entered judgment that the asserted claims were neither infringed nor invalid for indefiniteness. On appeal, the Federal Circuit reversed the judgment as to invalidity for indefiniteness and dismissed the infringement issue as moot. In doing so, the court offered clarity on several key issues. Continue Reading

Does Your Patent Application Qualify for the PTAB’s Fast-Track Appeal Pilot Program?

The USPTO recently launched the Fast-Track Appeal Pilot Program on July 2, 2020. The Pilot Program is slated to last one year, with a cap of 125 granted petitions per quarter – 500 total for the year. According to a Patent Trial and Appeal Board (PTAB) webinar hosted on Feb. 18, 2021, the PTAB may use discretion to grant additional petitions per quarter. The Pilot Program allows appellants, i.e., applicant of the patent application, to file a petition to request fast-track review of ex parte appeals.

To qualify, the patent application must be an original utility, design, or plant non-provisional application. In addition, (i) a notice of appeal must have been filed in the application, and (ii) a PTAB docketing notice was issued. In other words, a deficiency of either (i) or (ii) would result in the petition being denied. Further, the appellant must file a petition under 37 CFR 41.3 seeking fast-track review accompanied by a $420 non-refundable fee (37 CFR 41.20(a)). Importantly, the Pilot Program is not available for applications treated as special under MPEP §708.01, i.e., because of age or health of the inventor. Continue Reading

USPTO Provides Guidance in View of ‘’

On June 30, 2020, the Supreme Court of the United States decided USPTO v. B.V., rejecting a rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is automatically generic.[1] arose from the U.S. Patent and Trademark Office’s (USPTO) refusal to register the mark BOOKING.COM on the grounds that it is generic for hotel reservation services or, in the alternative, that it is merely descriptive and has not acquired distinctiveness. The Supreme Court rejected the agency’s application of a per se rule that the combination of a generic term and a top-level domain is always ineligible for registration. In October 2020, the USPTO issued new guidance for trademark examiners on this issue in view of Under the new examination guide, a [] term may still be refused as generic, but only when warranted by the evidence in the application record.[2] The terms of the new guidance are summarized below.

I. Analyze term, as a whole, for source-identifying capability.

The guidelines provide that to establish that a [] term is generic, the examining attorney must show that the relevant consumers would understand the primary significance of the term as a whole to be the name of the class or category of the goods and/or services identified in the application. The examining attorney is required to explain how the evidence of record supports the issuance of a genericness refusal,  showing not only that the individual elements of the [] term are generic but also that when combined, the combination creates no new or additional significance capable of indicating source to consumers. Continue Reading

Recent Trends of Pilot-Eligible MTAs and Complementary Post Grant Strategies

The USPTO’s Motion to Amend (MTA) Pilot Program has been in effect for nearly two years. The Pilot Program applies to all AIA trials instituted on or after March 15, 2019. Broadly, the Pilot Program’s objective is to provide patent owners with the additional options of requesting Preliminary Guidance from the Patent Trial and Appeal Board (PTAB) on its MTA, and of filing a revised MTA (rMTA) in response to requested Preliminary Guidance or to a petitioner’s opposition to the original MTA in order to achieve a more favorable outcome. But have these additional options under the Pilot Program actually increased the number of MTAs filed and their success rates? Let’s review.

The USPTO’s last update to the MTA study (Installment 6, July 2020) provided statistics on the total number of pre-pilot and pilot-eligible MTAs filed and their success rates in completed AIA trials through March 31, 2020. According to Graphs II-III of the USPTO’s update, the PTAB reached decisions on MTAs requesting to substitute claims in 335 of the 4,783 completed trials through March 31, 2020. In other words, MTAs requesting to substitute claims were strategically used by patent owners in about 7% of these trials. And of this subset, slightly less than 15% were granted or granted-in-part and denied-in-part by the PTAB. Continue Reading

Podcast: Open Source is Everywhere: A Primer for Compliance

Despite the fact that open source or so-called “free” software has been available for more than 30 years, and is likely used in the vast majority of software programs being developed today, many people remain confused as to what it is, how licensing it works, and how is it different from software in the public domain. There are a number of different license types, the most common of which is permissive, and as it sounds, it is relatively easy to work with once the notification requirements are understood and properly applied. Other license types include the colorfully named copyleft license that comes with a host of requirements and restrictions that most commercial software vendors will want to avoid. Once you have a better understanding of open source and the issues and opportunities it presents, it’s a good time to figure out what you are already using through an audit and performing any clean up that may be required.

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Federal Circuit Addresses Printed Publications Under 35 U.S.C. § 102 and the APA Notice Requirement in Inter Partes Reviews

In a precedential opinion, M&K Holdings, Inc. v. Samsung Electronics, Inc. (Fed. Cir. Feb. 1, 2021), the Federal Circuit further clarified the scope of prior art printed publications under 35 U.S.C. § 102. The Federal Circuit affirmed a Patent Trial and Appeal Board (PTAB) decision that the prior art at issue in an inter partes review proceeding, which had been generated as part of a joint task force for establishing industry standards, qualified as a printed publication.

In addition, the Federal Circuit addressed the issue of notice under the Administrative Procedure Act (APA). The Federal Circuit vacated the PTAB’s finding of anticipation with respect to one of the claims at issue, holding that because the underlying petition for inter partes review had asserted only obviousness for that claim, the PTAB’s reliance on anticipation impermissibly deviated from the invalidity claims for which the respondent had been put on notice.

The asserted patent was directed to methods for compressing video files. For its arguments before the PTAB, the petitioner relied on prior art that arose from a joint task force for establishing industry standards for high-efficiency video coding. The documents were discussed at the joint task force meetings and subsequently published on the joint task force website.

In rejecting the respondent’s arguments that the prior art did not qualify as printed publications, the Federal Circuit emphasized that the “key inquiry” is public accessibility and that a reference will be considered publicly accessible if it was “disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence[] can locate it” (quoting Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331, 1348 (Fed. Cir. 2016)).

The Federal Circuit held that it is sufficient to show that the channel through which the references were publicized – here, the joint task force meetings and website – was prominent or well known among persons of ordinary skill in the art. It is not necessary to show that the references themselves were prominent. Further, there is no requirement that the website landing page have search functionality, and any more focused search capability within the website need not provide the ability to search documents by content. Finally, it is not necessary to show that anyone actually used the website to access the documents. The Federal Circuit held that substantial evidence supported the PTAB’s finding that persons of ordinary skill in the art could have accessed the prior art with reasonable diligence through the joint task force website.

Finally, in vacating the PTAB’s finding of anticipation for lack of proper notice under the APA, the Federal Circuit rejected the petitioner’s argument that anticipation was inherent in its obviousness theory, noting that the petitioner expressly stated in its petition that the particular prior art reference failed to disclose certain limitations of the relevant claim. As a result, the PTAB’s anticipation finding based on that reference constituted a marked deviation from the evidence and theories presented in the original petition.

Considering a Common Phrase as a Trademark? Don’t Expect it to be Registrable.

There have been a number of recent Trademark Trial and Appeal Board (TTAB) cases involving phrase marks. In all instances, the phrases have been refused registration not because of descriptiveness or misdescriptiveness of any kind, but because they fail to function as trademarks due to their informational characteristics and widespread use.

This blog provides the background to refusals common phrases may encounter in the U.S. Patent and Trademark Office (USPTO), recent cases decided by the TTAB involving such phrases and how practitioners should deal with searches for and clearance of marks involving phrases. Continue Reading