The USPTO Harmonizes the Indefiniteness Standard Used for AIA Trials Making it More Difficult to Find a Claim Indefinite

Recently, the United States Patent and Trademark Office (USPTO) issued a memorandum to the Patent Trial and Appeal Board (PTAB) requiring the PTAB to change the standard used to assess the definiteness requirement under 35 U.S.C. § 112 for AIA trials. The PTAB must now use the indefiniteness test set forth by the Supreme Court in Nautilus Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). This change in standard is beneficial to patent owners.

Pursuant to 35 U.S.C. § 112(b), the claims of a patent or patent application need to “particularly point[] out and distinctly claim[] the subject matter … regard[ed] as the invention.” If the claims do not meet that threshold, they are considered indefinite. The USPTO conducts an indefinite assessment during examination, including ex parte appeals, reexaminations, and reissue proceedings, as well as during AIA trials. Continue Reading

Election Ballot Verification – A Patent Subject Matter Eligibility Analysis

In light of recent events, technologies directed toward verifying voter ballots may sound like attractive investment opportunities. However, potential investors often seek to ensure a technology is protected by one or more valid patents before opening their checkbooks. Interestingly, a Federal Circuit case from 2018, Voter Verified, Inc. v. Election Systems & Software, invalidated issued patent claims directed to voting methods and systems that provide for “auto-verification” of a voter’s ballot for lack of subject matter eligibility under 35 USC § 101.

Following a two-part analysis for determining whether claims are directed to patent-eligible subject matter under Alice Corp. v. CLS Bank Int., the court (1) determined that the claims were drawn to an abstract idea of “voting, verifying the vote, and submitting the vote for tabulation” and (2) found “no inventive concept in the claims sufficient to transform them into patent-eligible subject matter.” Recited at a high level of abstraction, the claims at issue before the court included one or more voting stations, each including a computer, a display, a printer, an input device, a ballot scanning machine, and a means for tabulating printed ballots. Among other limitations, the claimed voting station(s) presented an election ballot for voting, received and accepted input of votes by a voter, printed out the ballot for review and verification by the voter, scanned the verified ballot, and tabulated the printed ballots generated by the voting station(s). Continue Reading

Copyright Claims Board To Be Established; Criminal Streaming Law

Congress passed an act on Monday as part of the Consolidated Appropriations Act for 2021 that included the COVID-19 relief bill, expected to signed by President Trump, which will establish a voluntary dispute resolution process in the Copyright Office for infringement claims not exceeding $30,000. The Copyright Alternative in Small-Claims Enforcement Act of 2020 (the CASE Act) requires the Copyright Office to establish a Copyright Claims Board (the Board) to provide dispute resolution processes for parties involved in small copyright infringement claims.

Cases would be decided by a three-judge panel of copyright claims officers where damages would be capped at $15,000 per claim and $30,000 total. There is an opt-out procedure for defendants, but if the parties agree to this process, they forgo the right to be heard before a court and the right to a jury trial. The parties also will bear their own attorneys’ fees in the proceeding, except in the case of bad-faith conduct of a party. Continue Reading

Congress Passes the Trademark Modernization Act

On Monday as part of the Consolidated Appropriations Act for 2021 that included the COVID-19 relief package, Congress passed the Trademark Modernization Act, which President Trump is expected to sign.

With respect to trademark infringement litigation, the act restores the rebuttable presumption of irreparable harm to support injunctive relief on proof of trademark infringement. The United States Supreme Court decision in the patent infringement case of eBay, Inc. v. MercExchange had been applied in several circuits to eliminate the presumption of harm in trademark cases, requiring evidence of harm instead. The act resolves the split among the circuit courts and provides a valuable tool to trademark owners seeking to enjoin infringers. Continue Reading

Podcast: Assessing Risks in a Deal, How to Partner with Your Business Team

Businesses are not stagnant, and products change both in name and content. Brands are acquired as part of an acquisition, lines are extended in licenses, product lines are extended as businesses change. How do attorneys work with their clients to maintain brand initiatives during business deals and transitions? Jacqueline Lesser will walk through the key issues in addressing brands in deal making and new business initiatives.

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Podcast: Fast Track or Slow Stroll? Find the Right Pace For Your Patent Prosecution Matters

For a company rushing to bring a breakthrough product to a red-hot marketplace, the goal may be a speedy patent prosecution at the United States patent office – but for a “stealth mode” company, the goal may be a slower and quieter process that gives the company time to refine its own products and to evaluate its competitors. No matter your business’s ultimate objective, your business has an interest in how quickly or slowly things progress at the patent office – and in this podcast, BakerHostetler partner Aaron Rabinowitz discusses when to speed up or slow down patent prosecution and the many options that companies have to control the speed of their patent matters in the United States patent office and around the world.

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Federal Circuit Clarifies Standard For Bringing a Cancellation Proceeding under 15 U.S.C. § 1064

In a recent decision, Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020), the Court of Appeals for the Federal Circuit clarified the standard for maintaining a petition to cancel a trademark registration under §1064 of the Lanham Act.  The Federal Circuit noted that while these questions are often framed as questions of “standing,” they are “more appropriately viewed as requirements for establishing a statutory cause of action.” Id. at 1303.

In this case, the petitioner (SFM) owns a federal registration for SPROUTS for grocery store services, while the respondent (Corcamore) owned a federal trademark registration for SPROUT for use with vending machine services. In bringing its cancellation petition, SFM claimed that its rights were superior because of its purportedly earlier usage of the SPROUTS mark, and it further alleged that Corcamore’s SPROUT mark was injurious because it was “likely to cause confusion or mistake, or to deceive the purchasing public.” Continue Reading

President Trump’s Continued Focus on Counterfeit Goods

On Oct. 13, President Donald Trump signed a “Memorandum on Stopping Counterfeit Trafficking on E-Commerce Platforms Through Fines and Civil Penalties.”[1] This memorandum builds on his prior Jan. 31 executive order, discussed in the first article of this series, on the increased focus in 2020 on combating the sale of counterfeit goods.

The president’s latest memorandum seeks to focus enforcement efforts on e-commerce platforms selling counterfeit goods. As part of this policy, he aims to “pursue legislation that would clarify and strengthen the executive branch’s authority and increase its resources to deter and address counterfeit trafficking on e-commerce platforms.”[2] The memorandum implores the secretary of Homeland Security and the attorney general to consider taking appropriate actions to seize counterfeit goods imported into the United States in connection with a transaction on an e-commerce platform and impose the maximum fines and civil penalties permitted by law on any e-commerce platform that is in any way connected to the importation. Additionally, the president directs the secretary of Homeland Security, consulting with the attorney general, to develop a legislative proposal to promote the objectives of the memorandum within 120 days. The proposal will therefore be due on or before Feb. 10, 2021.

The SHOP SAFE Act, discussed in our previous article, is still currently before the House Committee on the Judiciary. This bill also seeks to hold e-commerce platforms liable for the sale of counterfeit goods on their sites. It will be interesting to see whether the secretary of Homeland Security puts forth a similar proposal to the SHOP SAFE Act or one that is broader in scope and seeks harsher penalties. Under the current draft of the SHOP SAFE Act, an e-commerce site is only liable if it fails to adopt the 10 best practices and the counterfeit goods are ones that implicate health and safety. The secretary’s proposal could extend a similar type of legislation to all counterfeit goods given the policy outlined in the Memorandum of including intellectual property rights holders, businesses and workers in the list of individuals it seeks to protect. Stay tuned for an article on the proposal once it issues.


[2] Id.

The Legislative Branch’s Answer to Stopping Counterfeit Goods: The SHOP SAFE Act

This post is the second in our ongoing series on the heightened focus in 2020 on combating the sale of counterfeit goods. Our first article focused on the actions of the executive branch, while this article discusses the actions of the legislative branch in the fight against the sale of counterfeit goods.

In early March, a bipartisan bill was introduced in the House of Representatives aimed at curbing the sale of counterfeit goods online.[1] The bill is titled “Stopping Harmful Offers on Platforms by Screening Against Fakes in E-Commerce Act of 2020,” or the SHOP SAFE Act of 2020 for short. The legislation is currently pending before the House Committee on the Judiciary and aims to address the wide array of counterfeit products being offered for sale on third-party marketplace platforms. This act comes on the heels of the Jan. 31 executive order issued by President Donald Trump that called for a crackdown on companies that import or facilitate the import of counterfeit goods.[2] Continue Reading

Wielding Trademark Rights to Fight COVID-19 Scams

Trademark owners are wielding their intellectual property rights to stop COVID-19 scams and prevent the spread of misinformation about the ongoing pandemic. With the injunctive power of the Lanham Act, medical supply companies, software companies and even educational institutions are able to quash scams and misinformation.

Earlier this year, 3M launched what has grown into a widespread campaign of almost two dozen lawsuits targeting price gougers for infringing its trademark rights. Third parties unassociated with 3M were charging exorbitant prices for their inventories of 3M products. These scammers use 3M’s trademarks to make offer sheets and price lists appear legitimate. Several of these lawsuits successfully, and quickly, enjoined these third parties from continuing to sell 3M products using 3M’s trademarks. Continue Reading