Patent Owners Beware: Serial Filings, Rent-Seeking May Be Grounds for Adverse Fee Award

The US Court of Appeals for the Federal Circuit vacated and remanded a district court’s denial of attorney’s fees to an accused infringer, finding the district court did not properly consider the Patent Owner’s manner of litigation, including the history of plaintiff’s actions in other jurisdictions and the broader context of its litigation practices. Elec. Commc'n Techs., LLC v. ShoppersChoice.com, LLC, Case No. 19-2087 (Fed. Cir. July 1, 2020) (Wallach, J.). Following a finding by a Florida district court that a patent asserted by Electronic Communication Technologies (ECT) was ineligible under 35 U.S.C. § 101, ShoppersChoice filed a motion for attorney’s fees, citing ECT’s use of standardized demand letters and repeated infringement actions seeking nuisance-value settlements. ShoppersChoice also informed the district court of a recent award of attorney’s fees against ECT in the Central District of California (the True Grit decision) for conduct relating to...

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“All Substantial Rights” Test Informative in Obviousness-Type Double Patenting Context

The US Court of Appeals for the Federal Circuit endorsed for the first time the “all substantial rights” test to determine whether inventions are commonly owned for purposes of obviousness-type double patenting validity analysis of a later patent. Immunex Corp. v. Sandoz, Inc., Case No. 20-1037 (Fed. Cir. July 1, 2020) (O’Malley, J.) (Reyna, J., dissenting). The Court determined that patents were not commonly owned—and therefore a later patent was not invalid for obviousness-type double patenting—when the patentee retained a secondary right to sue for infringement and the right to “veto” further assignment of the patents by the grantee. Roche licensed a family of patent applications to Immunex. Under the license agreement, Immunex agreed to pay a running royalty to Roche based on sales of products incorporating the patented technology. Non-party Amgen subsequently acquired Immunex. Amgen, Immunex and Roche entered into an agreement to eliminate the continuing...

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Federal Circuit Extends Arthrex to Ex Parte Re-Examination Proceedings

The US Court of Appeals for the Federal Circuit vacated and remanded a decision issued by the Patent Trial and Appeal Board (PTAB), holding that its decisions in Arthrex and VirnetX also apply to ex parte examinations at the PTAB. In re: Boloro Global Ltd., Case Nos. 19-2349, -2351, -2353 (Fed. Cir. July 7, 2020) (Dyk, J.). The issue regarding ex parte appeals started to take shape in October 2019—in the context of an inter partes review (IPR) proceeding—when the Federal Circuit held that the appointment of administrative patent judges (APJs) at the PTAB is unconstitutional. Arthrex v. Smith & Nephew (IP Update, Vol. 22, No. 11). APJs are appointed by the secretary of commerce in consultation with the director of the US Patent and Trademark Office (PTO) pursuant to 35 USC § 6(a). In Arthrex, The Federal Circuit determined that APJs are principal officers and are not constitutionally appointed, because as principal officers they must be appointed by the...

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Supreme Court: “Booking.com” Can Be Registered as Trademark

By an 8-1 vote, the Supreme Court rejected a per se rule by the US Patent and Trademark Office (PTO) that a generic word followed by “.com” is necessarily generic and therefore ineligible for trademark protection. U.S. Patent and Trademark Office et al. v. Booking.com BV, Case No. 19-46 (Supr. Ct. June 30, 2020) (Ginsberg, Justice) (Sotomayor, Justice, concurring) (Breyer, Justice, dissenting). In so doing, the Supreme Court found that the proper test for whether “booking.com” is eligible for trademark protection for travel booking services is whether the public perceives “booking.com” as identifying a single source. Trademarks identify and distinguish the goods and services of a single party, and the Lanham Act establishes a system of trademark registration. Among other requirements for registration, a trademark must be distinctive, as judged along a spectrum of trademark distinctiveness. Distinctive trademarks, in order of most to least strength, include...

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Fifth Circuit Drills Down to Details in Drilling Database Disagreement

In a wide ranging opinion, the US Court of Appeals for the Fifth Circuit held that copying unimportant database schema from a proprietary database did not constitute infringement. The Court also held that where the technological measure that the defendant allegedly circumvented did not effectively control access to the work, there was no Digital Millennium Copyright Act (DMCA) violation. Moreover, the Court found error in not treating the defendant as the sole prevailing party on the copyright and DMCA claims for purposes of attorneys’ fees, notwithstanding plaintiff’s success on other claims. Digital Drilling Data Systems, LLC v. Petrolink Services, Inc., Case No. 19-20116 (5th Cir. July 2, 2020) (Duncan, J.). Digital Drilling Data Systems (Digidrill) provides software used in oil drilling operations. Digidrill’s software collects data from underground sensors in order to help above-ground operators steer the drill. Digidrill’s systems compile the data into...

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Stick to Your Guns: PTAB Should Rarely Issue New Grounds of Unpatentability

The Patent Trial and Appeal Board (PTAB) Precedential Opinion Panel (POP) issued a precedential opinion in an inter partes review (IPR) to resolve two questions: May the PTAB raise a ground of unpatentability not developed by the petitioner? If it does so, must the PTAB provide the parties notice and an opportunity to respond to the new ground of unpatentability? Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, Case No. IPR2018-00600 (USPTO July 6, 2020) (Boalick, CAPJ) (granting request for POP rehearing). The POP held that while the PTAB may raise new grounds of unpatentability, it should refrain from doing so except in rare instances. If it does raise new grounds of unpatentability, the PTAB must provide the parties notice and an opportunity to respond to the new grounds. Titan filed a petition requesting IPR of a patent owned by DynaEnergetics directed to a perforating gun assembly for wellbore tools. One of the grounds alleged anticipation by a prior...

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PTO Extends Time for Small and Micro Entities to Pay Certain Fees

Under the Coronavirus Aid, Relief, and Economic Security (CARES) Act, the US Patent and Trademark Office (PTO) extended the time for small and micro entities to make certain fee payments until September 30, 2020. Also pursuant to the CARES Act, the PTO waived the petition fees for petitions to revive until July 31, 2020. For small and micro entities only, the following fees due between, and inclusive of both, March 27, 2020, and September 29, 2020, will be considered timely if paid on or before September 30, 2020, if the payment is filed with a statement that the failure to timely pay the fee was due to the Coronavirus (COVID-19) outbreak: The basic filing fee, search fee, examination fee and late filing surcharge due in response to a PTO notice issued during the pre-examination processing Basic national fee Issue fee Maintenance fee. The PTO will also waive the petition fee under 37 CFR § 1.17(m) for petitions to revive filed by July 31, 2020, if the failure...

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Reliance on Common Sense Permitted in Obviousness Analysis

The US Court of Appeals for the Federal Circuit affirmed a final written decision from the Patent Trial and Appeal Board (PTAB) finding patent claims directed to aircraft lavatories obvious based on prior art because a skilled artisan would have used common sense to incorporate a missing limitation into the prior art. B/E Aerospace, Inc. v. C&D Zodiac, Inc., Case Nos. 19-1935, -1936 (Fed. Cir. June 26, 2020) (Reyna, J.). C&D Zodiac sought inter partes review of two patents owned by B/E Aerospace relating to space-saving technologies for aircraft lavatory enclosures. The challenged claims recited a “first recess” and a “second recess” associated with a lavatory unit. The PTAB found that the challenged claims were obvious over several prior art patents under separate “traditional” and “common sense” approaches. The PTAB based its traditional approach on Zodiac’s arguments and expert testimony. The PTAB’s common sense approach relied on the prior art in...

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Lights Out for Light-Up Shoe Patent, Thanks to Non-Limiting Preamble

Finding that a patent’s preamble was not limiting and the patent owner’s secondary considerations of non-obviousness were weak, the US Court of Appeals for the Federal Circuit upheld a finding of obviousness by the Patent Trial and Appeal Board (PTAB). Shoes By Firebug LLC v. Stride Rite Children’s Grp., LLC, Case Nos. 19-1622, -1623 (Fed. Cir. June 25, 2020) (Lourie, J.). Stride Rite filed two inter partes review petitions challenging the patentability of two of Firebug’s patents directed to illuminated footwear. The patents describe footwear with light sources imbedded between multiple layers of upper portions of the footwear. The PTAB found the challenged claims unpatentable as obvious in view of the prior art references, concluding that the preambles of both Firebug patents did not limit the claims and Firebug’s evidence of secondary considerations of non-obviousness did not offset the disclosure of the references. Firebug appealed Firebug asserted that...

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Knock It Off, Knockoffs? Ninth Circuit Affirms Trade Dress Rights but Not Fame

Taking on issues of functionality and fame relating to trade dress rights, the US Court of Appeals for the Ninth Circuit affirmed in part and reversed in part the district court’s judgment after a jury trial on claims of infringement and dilution of trade dress rights in furniture. The Ninth Circuit distinguished utilitarian functionality from aesthetic functionality, and reaffirmed the high burden on the proponent of dilution to establish that the mark has become a “household name.” Blumenthal Distributing, Inc. DBA Office Star v. Herman Miller, Inc., Case Nos. 18-56471, -56493 (9th Cir. June 25, 2020) (Korman, J.). In 2013, Herman Miller accused Office Star Products (OSP) of selling unauthorized replicas of its Eames lounge chair and Aeron ergonomic office chair, and filed suit against the company for infringement and dilution of its claimed registered and unregistered trade dress rights in the chairs. A jury found that both the registered and unregistered...

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