IP UPDATE
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IP UPDATE
Exploring the latest in intellectual property law
Results for "Patent application"
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This .SUCKS: Trademark Applications for Identical Characters Is a No-Go

by | Feb 10, 2022 |

The US Court of Appeals for the Federal Circuit affirmed a Trademark Trial and Appeal Board (Board) decision affirming the US Patent and Trademark Office’s (PTO) refusal to register two trademark applications for “.SUCKS.” In Re: Vox Populi Registry Ltd., Case No. 21-1496 (Fed. Cir. Feb. 2, 2022) (Lourie, Dyk, Stoll, JJ.)

Vox is a domain registry operator that maintains the master database of all domain names registered in each top-level domain. Vox filed two trademark applications for identical characters, one as a standard character and the other as a stylized form of .SUCKS, as shown below.

The PTO refused Vox’s applications on the grounds that, when used in connection with the domain services, each failed to function as a trademark. Vox appealed to the Board. The Board concluded that .SUCKS, whether as a standard mark or in the stylized form, would not be perceived as a source identifier. Vox appealed the Board’s decision only with respect to the stylized form of .SUCKS.

On appeal, the Federal Circuit noted that although Vox did not appeal the rejection of the standard character application, it spent much of its opening brief arguing that the standard character functions as a mark. As such, the Court reviewed the Board’s decision with respect to the standard character mark .SUCKS under the substantial evidence standard. Substantial evidence “means only such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” The Court found that substantial evidence supported the Board’s finding that consumers will view .SUCKS as only a non-source identifying part of a domain name, rather than as a trademark. The Court cited evidence reviewed by the Board, including Vox’s website, online articles and advertisements showing that .SUCKS refers to a product rather than as an identifiable provider or service. Ultimately, the Court found that the Board reasonably weighed the evidence.

The Federal Circuit next addressed the question of whether the stylized design of .SUCKS is registerable. The Court found no error in the Board’s analysis of whether the stylized form creates a separate commercial impression, where “all of the characters in the mark are the same height and width and are merely displayed in a font style that was once mandated by the technological limitations of computer screens.” Because the stylized design was not inherently distinctive, the Court rejected Vox’s application, thus affirming the Board’s decision in full.



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PTO Launches New Patent Public Search Tool and Webpage

by | Feb 3, 2022 |

On February 1, 2022, the US Patent and Trademark Office (PTO) announced a new Patent Public Search tool similar to the search tools used by patent examiners to provide more convenient and robust full-text searching of all US patents and published patent applications.

The Patent Public Search tool is free to all users with internet access and is based on the advanced Patents End-to-End (PE2E) search tool used by patent examiners. It also combines the capabilities of four existing search tools scheduled to retire in September 2022: (1) Public-Examiner’s Automated Search Tool (PubEAST), (2) Public-Web-based Examiner’s Search Tool (PubWEST), (3) Patent Full-Text and Image Database (PatFT) and (4) Patent Application Full-Text and Image Database (AppFT). (In the past, the public could only access PubEAST and PubWEST at a PTO facility or a Patent and Trademark Resource Center.)

Additional benefits of the new search tool include:

  • Multiple layouts with several tools to provide more data at once
  • Multicolor highlighting that can be viewed across multiple gadgets and be turned on or off
  • Ability to tag documents into multiple groups that can be renamed and color coordinated
  • Ability to add notes, tags, relevant claims and highlights to an image
  • Use of the same searching syntax as PubEAST and PubWEST.

The PTO also introduced a new Patent Public Search webpage that includes FAQs, training resources and additional information to assist the public in using the new tool. The PTO is also planning on conducting public training sessions that will be posted on the webpage as soon as they are scheduled.



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Post-AIA Patents Are Not Shielded from Interferences

by | Dec 16, 2021 |

Addressing the applicability of interference proceedings to patent applications filed after the Leahy-Smith America Invents Act (AIA) was enacted, the Patent Trial & Appeal Board (Board) found it proper to declare an interference between a patent application with a priority date before March 16, 2013, the AIA implementation date, and a patent with a priority date after March 16, 2013. SNIPR Technologies Limited v. The Rockefeller University, Pat. Interf. No. 106,123 (DK) (PTAB Nov. 19, 2021) (Katz, APJ).

The AIA switched the US patent system from a “first to invent” to a “first inventor to file” system. In line with this change, the AIA eliminated the patentability requirement under 35 U.S.C. § 102(g), regarding whether another inventor made the invention first, and the interference proceeding under 35 U.S.C. §135 for determining who invented the claimed invention first. Section 3(n)(2) of the AIA provides a timing provision relating to this change. Under this section, the interference proceeding “shall apply to each claim of an application for patent, and any patent issued thereon, for which the amendments made by this section also apply, if such application or patent contains or contained at any time, a claim [having a priority date before March 16, 2013].”

The US Patent & Trademark Office (PTO) declared an interference between several patents owned by SNIPR and a pending application to The Rockefeller University. The claims involved were drawn to a method of killing or modifying specific bacteria in a mixed population of bacteria with different species using the CRISPR-mediated gene editing technology. The Rockefeller application asserted a priority date of February 7, 2013 (i.e., pre-AIA), while the SNIPR patents asserted the priority date of May 3, 2016 (i.e., post-AIA). SNIPR argued that the interference proceeding was improper since all involved patents were filed after the AIA was enacted.

The Board rejected SNIPR’s argument, explaining that Section 3(n)(2) provides for continuation of interference under certain circumstances. The Board noted that the patentability requirement under 35 U.S.C. §102(g) and interference still apply to each claim having a priority date before March 16, 2013, such as the claims of Rockefeller’s involved application. Accordingly, when the Rockefeller claims would otherwise be allowable, except for the existence of an interference with other claims such as SNIPR’s claims, Section 3(n)(2) necessarily calls for an interference proceeding between the Rockefeller application and the SNIPR patents. Otherwise, the PTO would not be able to determine whether Rockefeller was entitled to a patent under 35 U.S.C. §102(g).

The Board further reasoned that, instead of ending all interferences at the implementation of the AIA, US Congress enacted Section 3(n)(2) to continue the interference proceeding as applicable to certain cases after AIA. Congress also did not explicitly require that cases involved in interferences must all have priority dates before March 16, 2013. Therefore, the Board found that Congress contemplated interferences between pre-AIA and post-AIA applications and patents. Accordingly, the Board ruled in Rockefeller’s favor, finding it was the first to invent the claimed technology.



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PTO Will Transition to Electronic Issuance of Patents and Trademarks

by | Dec 16, 2021 | ,

The US Patent & Trademark Office (PTO) announced on December 10, 2021, that it intends to transition to electronic issuance of patents and trademarks in 2022. Under the current rule (37 C.F.R § 1.315), the PTO must deliver or mail a patent “upon issuance to the correspondence address of record.” The PTO will soon issue a notice of proposed rulemaking to seek public feedback on revising the rules of practice to issue patents electronically. Under the proposed changes, the PTO would no longer mail patents to the applicant. Instead, the PTO would issue patents electronically via the Patent Center and Patent Application Image Retrieval, from which the patents could be downloaded and printed.

While no changes to the trademark rules are necessary, the PTO will also issue a public request for comments on replacing paper registration certificates with digital versions.

The PTO believes that electronic issuance will reduce the time it takes for a patent or trademark to issue by about two weeks.

Once the transition is complete, applicants can still receive a paper copy of the issued patents and trademark registration certificates with an embossed gold seal and the director’s signature (i.e., a ribbon certificate) for a fee of $25 per copy.



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IPR on Written Description? Claims Found Unpatentable Based on Lack of Entitlement to Priority Date

by | Dec 9, 2021 |

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) ruling, based on a written description analysis, that certain claims were invalid as anticipated by an earlier priority application from the same family. Indivior UK Ltd. v. Dr. Reddy’s Labs. S.A., Case Nos. 20-2073, -2142 (Fed. Cir. Nov. 24, 2021) (Lourie, J.) (Linn, J., concurring in part and dissenting in part).

Indivior’s patent, which issued from a fifth continuation application claiming priority back to 2009, claimed orally dissolvable films with therapeutic agents. Some of the claims recited numeric ranges, such as “about 40% wt to about 60% wt of a water-soluble polymeric matrix.” Instead of a range, one claim recited a specific amount of “about 48.2% wt” of the polymeric matrix. The patent’s specification did not expressly mention the claimed ranges or the specific 48.2% amount, but it did contain tables comprising quantities of polymer from which Indivior contended a person of ordinary skill in the art could calculate the percentage of polymer by weight.

Indivior argued that the polymer weight percentage limitations were supported by the priority application and, therefore, the patent was entitled to that priority date. Dr. Reddy’s contended that since the polymer weight percentage limitations were added later, an intervening patent publication (Myers) was prior art and anticipated the claims. Indivior did not contest that if Myers was prior art, it anticipated the claims. As a result, the Board’s decision on anticipation under 35 U.S.C. §102 turned on the priority analysis which, in turn, hinged on written description. The Board found that the tables disclosed formulations from which the “48.2% wt” could be calculated and, thus, claims reciting that limitation were not anticipated by Myers. However, the Board found that the claimed ranges (i.e., about 40% wt to about 60% wt) were not disclosed in the specification, and those claims were therefore anticipated by Meyers. Indivior appealed the Board’s anticipation finding, and Dr. Reddy’s appealed the no anticipation finding.

The Federal Circuit first analyzed the specification and concluded that there was no written description support for the broader range of “about 40% wt to about 60% wt.” The Court explained that the range was not disclosed in the specification, the specific values of 40% and 60% were not disclosed and there was another “inconsistent” teaching for weights of “at least 25%.” The Court noted that two specific tables in the specification “do not constitute ranges; they are only specific, particular examples. For written description support of a claimed range, more clarity is required.” The Court explained that “[h]ere, one must select several components, add up the individual values, determine the aggregate percentages, and then couple those aggregate percentages with other examples in the [] application to create an otherwise unstated range. That is not a written description of the claimed range.” The Court applied similar analysis in finding lack of written description for other claims reciting a slightly different range. Ultimately, the Court agreed that there was no written [...]

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US Lawyers Aiding Scam Trademark Applications May Face Sanctions

by | Oct 28, 2021 |

As reported by the US Patent & Trademark Office (PTO) this past summer, since mid-2020 trademark applications from US and foreign applicants have “surged to unprecedented levels.” In December 2020 alone, the PTO received 92,608 trademark applications, an increase of 172% over December 2019. Not only has this extraordinary volume of applications created a backlog and delay in the procedural review of new US trademark application filings, but the PTO is experiencing a notable increase in what it calls “suspicious submissions ranging from inaccurate to fraudulent.”

These illegitimate trademark filings harm the quality and integrity of the trademark register and have significant legal and financial impact on legitimate brand owners whose applications may be blocked by fraudulent filings for marks that are identical or similar to their real brands. Faced with a legal obligation to defend and enforce their trademarks, legitimate brand owners are forced to dispute such illegitimate filings with letters of protest, by filing oppositions or cancellation actions in the Trademark Trial & Appeal Board, and even by taking action in the federal courts. Such enforcement and defensive actions can clog up these forums and force brand owners to take on costs that would not otherwise be necessary, and which may distract from, or reduce the budget for, real trademark disputes.

The PTO outlined various strategies and tools to review, assess, challenge and combat suspicious and fraudulent filings, including aspects of the Trademark Modernization Act of 2020. In 2019, the PTO also implemented a rule requiring any overseas trademark applicant to file with a US lawyer. The requirement for a US lawyer appears to have resulted in many foreign applicants (primarily from China) making up fake names, addresses and bar credentials for the US lawyers named in their applications. Not all named US lawyers are fake, however, as the PTO’s investigations into certain lawyers lodging a high volume of trademark filings for Chinese-based applicants have revealed that some US-based lawyers may be taking on clients from China without conducting proper diligence as to the veracity of the client’s trademark application information. For example, the PTO’s investigation of some potentially illegitimate filings from applicants in China reveal doctored or disingenuous specimens of use, including e-commerce listings for products that may not actually exist or are no longer “in stock” (and likely never were “in stock”).

In September 2021, the PTO’s investigations into US lawyers with a high volume of filings for Chinese applicants resulted in two sanctions orders. The first was issued against a lawyer found to have filed thousands of applications for overseas parties deemed fraudulent by operating as a US-based agent for a centralized “filing gateway” platform located in India. The sanction order includes a 12-month probationary period and required ethics and trademarks classes. The second sanction against a US-based lawyer specifically noted that the lawyer did not do enough to properly review the applications that they signed on behalf of an applicant based in China. It has [...]

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Design Patent Prior Art Must Be From Same or Analogous Field as Claimed Article of Manufacture

by | Oct 14, 2021 |

Finding that the Patent Trial & Appeal Board (Board) applied an erroneous interpretation of claim scope, the US Court of Appeals for the Federal Circuit reversed a Board decision upholding an examiner’s rejection of a lip implant design patent as anticipated by a non-analogous art tool. In re: SurgiSil, Case No. 20-1940 (Fed. Cir. Oct. 4, 2021) (Moore, C.J.)

SurgiSil filed a design application for a lip implant shaped like a generally cylindrical rod that tapered to a point at each end. The examiner rejected the patent as anticipated by a “stump,” an art tool of similar, almost identical, shape used for smoothing and blending areas of pastel or charcoal. SurgiSil appealed the rejection to the Board. The Board affirmed the rejection, finding that the differences in the shapes of SurgiSil’s lip implant and the art tool were minor. The Board rejected SurgiSil’s argument that the two articles of manufacture were “very different,” reasoning that it is irrelevant whether a prior art reference is analogous for anticipation purposes. SurgiSil appealed.

Reviewing the Board’s legal conclusions de novo, the Federal Circuit found that the Board erred as a matter of law. Citing 35 U.S.C. § 171(a) and the 1871 Supreme Court decision in Gorham Co. v. White, the Court explained that a design patent claim does not cover the design in the abstract, and that it is limited to the particular article of manufacture identified in the claim. The Court concluded that the claimed design was limited to a lip implant, did not cover other articles of manufacture and that the Board’s decision therefore rested on an erroneous interpretation of the claim’s scope.



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Bascom Cannot Save Your Claims if Your Own Patent Says You Used Known Technology

by | Sep 9, 2021 |

The US Court of Appeals for the Federal Circuit affirmed a district court determination that claims of several patents were patent ineligible under 35 U.S.C. § 101 because they did not recite an innovation with sufficient specificity to constitute an improvement to computer functionality. Universal Secure Registry LLC v. Apple Inc., Case No. 20-2044 (Fed. Cir. Aug. 26, 2021) (Stoll, J.)

Universal Secure Registry (USR) sued Apple, Visa and Visa U.S.A. (collectively, Apple), asserting four patents directed to securing electronic payment transactions, which USR alleged allowed for making credit card transactions “without a magnetic-stripe reader and with a high degree of security” (e.g., allegedly Apple Pay or Visa Checkout). Apple moved to dismiss the complaint under Fed. R. Civ. Pro. 12(b)(6), arguing that the asserted patents claimed patent-ineligible subject matter under 35 U.S.C. § 101. The Delaware magistrate judge, quoting Visual Memory v. NVIDIA (Fed. Cir. 2017), determined that all the representative claims were directed to a non-abstract idea because “the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.”

The district court judge disagreed, concluding that the representative claims failed at both Alice steps, and granted Apple’s motion to dismiss. The district court found that the claimed invention was directed to the abstract idea of “the secure verification of a person’s identity,” and that the patents did not disclose an inventive concept—including an improvement in computer functionality—that transformed the abstract idea into a patent-eligible application. USR appealed.

In assessing the claims under the Alice two-part test, the Federal Circuit noted that in cases involving authentication technology, patent eligibility often turns on whether the claims provide sufficient specificity to constitute an improvement to computer functionality itself. For example, in its 2017 decision in Secured Mail Solutions v. Universal Wilde, the Court (at Alice step one), held that claims directed to using a conventional marking barcode on the outside of a mail object to communicate authentication information were abstract because they were not directed to specific details of the barcode, how it was processed or generated or how it was different from long-standing identification practices. Similarly, in its 2020 decision in Prism Technologies v. T-Mobile, where the claims broadly recited “receiving” identity data of a client computer, “authenticating” the identity of the data, “authorizing” the client computer and “permitting access” to the client computer, the Court held at Alice step one that the claims were directed to the abstract idea of “providing restricted access to resources,” not to a “concrete, specific solution.” At step two, the Court determined that the asserted claims recited conventional generic computer components employed in a customary manner such that they were insufficient to transform the abstract idea into a patent-eligible invention.

The claims in issue fared similarly. The district court held that the representative claim was not materially different from the Prism claims, and the Federal Circuit agreed. Although the [...]

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Footnote Doesn’t Preserve Claim Construction Argument, but Patent Owner Must Observe “Nose of Wax” Principle

by | Sep 2, 2021 |

The US Court of Appeals for the Federal Circuit rejected an insufficiently developed claim construction challenge and found noninfringement where the patentee argued that a key feature shared by the accused device and the prior art distinguished the prior art from the claimed invention. CommScope Technologies LLC v. Dali Wireless Inc., Case Nos. 20-1817; -1818 (Fed. Cir. Aug. 24, 2021) (Stoll, J.)

CommScope Technologies and Dali Wireless are both in the wireless telecommunications industry. After CommScope sued Dali for infringement of five of its patents, Dali counterclaimed for infringement of two of its own patents. One of Dali’s patents relates to a method of predistorting a signal to account for distortion that occurs when the signal is amplified. The patent describes a training mode in which a feedback loop operates to update lookup tables and an operating mode in which a certain controller is turned off and the lookup table is no longer updated. In particular, the claim recites “switching a controller off to disconnect signal representative of the output of the power amplifier,” which the district court construed to mean “switching a controller to a nonoperating state to disconnect signal representative of the output of the power amplifier.” The accused product has two power amplifiers, and the controller switch continuously chooses between feedback signals for calculating predistortion values. Similarly, one asserted prior art reference discloses a system including multiple power amplifiers and a switch that continuously selects one of the feedback signals. At trial, the jury found the patent both valid and infringed, and the district court denied judgment as a matter of law (JMOL) of invalidity and no infringement.

On appeal, Dali included a footnote challenging the district court’s claim construction. The Federal Circuit held this challenge ineffective for three reasons, writing:

First, an argument that is only made in a footnote of an appellant’s brief is forfeited. Second, even if the argument were in the body of the brief, it is insufficiently developed. Finally, and most importantly, it is irreconcilable with Dali’s statements in other portions of its brief: (1) asserting that the district court’s construction is “unchallenged” and (2) applying the construction in the context of invalidity.

The Federal Circuit also criticized Dali for taking inconsistent positions with respect to application of its claims to the accused product and the prior art “given [the accused device] has a switch that operates identically [to the prior art.” “[t]his case falls squarely within the principle that a ‘patent may not, like a nose of wax, be twisted one way to avoid anticipation and another to find infringement.’” The Court held that no substantial evidence supported the infringement verdict because there was no evidence that the controller in the accused product put itself in the claimed “nonoperating state.” Accordingly, it reversed the denial of JMOL of noninfringement (while affirming the balance of the judgment below).



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The Application of “Authentication by Comparison” at the PTAB

by | Aug 26, 2021 |

Directly addressing the application and operation of the Federal Rules of Evidence in proceedings before the Patent Trial & Appeal Board (Board), the US Court of Appeals for the Federal Circuit affirmed-in-part and reversed-in-part two inter partes review (IPR) decisions, criticizing the Board’s refusal to consider a particular reference relied upon by the patent challenger on the basis of failure to authenticate. Valve Corp. v. Ironburg Inventions Ltd., U.S. Federal Circuit Court of Appeals Nos. 20-1315, -1316, -1379 (Fed. Cir. Aug. 17, 2021) (Dyk, J.)

The Board found that an IPR petitioner, Valve Corporation, failed to show that several challenged patents were unpatentable based on a non-authenticated copy of a critical prior art reference (the Burns article). The Burns article was a printed copy of a 2010 online review of an Xbox 360 controller. Simon Burgess, a co-inventor of the patents at issue, had facilitated the publication of the Burns article by providing a test controller to Dave Burns (who worked for an online gaming magazine) for promotional purposes. Valve appealed the Board’s decision.

Valve argued that the Burns article copy submitted in connection with the IPR (the Exhibit) was merely a printout of the same online article cited and enclosed in the prosecution histories of the challenged patents, as well as another of Ironburg’s patents directed toward similar subject matter. The Board concluded that Valve failed to show that the Exhibit was the same version of the Burns article that appeared in the prosecution history and that it was not obligated to compare the documents in the absence of testimony from Valve that the two were identical. Valve appealed.

In reviewing the Board’s decision, the Federal Circuit first referred to the principles of authentication by comparison under Fed. R. Evid. 901(b)(3), which permits authentication of a document by a comparison with an authenticated specimen “by an expert witness or the trier of fact.” While the Court did note a discrepancy in the dates shown in the Exhibit and in the Burns article in one of the prosecution histories, the Court found that the difference in dates did not bear on the subject matter being disclosed, which was “virtually identical” between the two, as well as identical to the version of the same article in the other two relevant file histories. The Court held that the Board was obligated to perform this comparison and erred by failing to do so.

After determining that the Exhibit was “substantively the same” as the versions of the Burns article from the relevant prosecution file histories, the Court addressed the question of whether the Exhibit was a printed publication under 35 U.S.C. § 102(a)(1). The Board found “overwhelming evidence” that the Burns article was accessible prior to the critical date of the patents at issue, based in significant part on the fact that Mr. Burgess had provided a controller to Mr. Burns with the purpose of a “dialogue with the intended audience,” an indicia of public accessibility. The Board also noted its agreement with [...]

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