Defendants in patent litigation frequently mount an invalidity defense under 35 U.S.C. § 101 by arguing that asserted claims are directed to abstract ideas, which are not eligible for patent protection under the first step of the Alice[1] test. Often, these defendants fail to account for significant aspects of the asserted claims, resulting in an oversimplification that doesn’t accurately articulate what the claims are actually directed to. This was precisely the government’s error in Thales Visionix Inc. v. United States (Fed. Cir. 2017), where the Federal Circuit found, contrary to the government’s characterization of the claims (which the Claims Court adopted), the asserted claims were not directed to an abstract idea.
On March 27, 2017, the U.S. Supreme Court heard oral argument in TC Heartland v. Kraft, a case that centers on where patent infringement lawsuits can be filed.
Key Takeaways
- If the Supreme Court sides with TC Heartland, patent infringement hotbeds like the Eastern District of Texas would likely see a drastic reduction in filings because cases would be limited to the state of incorporation of the defendant, or where the defendant has committed acts of infringement and has a regular and established place of business.
- Because many corporations select Delaware as their state of incorporation, a ruling in favor of TC Heartland would likely cause a sharp increase in patent infringement filings in that district.
- Switching the heavy patent infringement case load from the Eastern District of Texas to the District of Delaware will not solve TC Heartland’s concern about one judicial district handling a disproportionate majority of patent infringement cases.
- If the Supreme Court sides with Kraft Foods, the status quo will be maintained and patent owners will have flexibility in selecting venue for infringement actions.
Today the U.S. Supreme Court issued an opinion, SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, in which it held that laches cannot be used as a defense to a claim of patent infringement. The opinion had been anticipated ever since the Court’s decision in Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. ___ (2014) struck down the defense in copyright cases, using reasoning that appeared to apply to all federal actions involving causes of action subject to statutes of limitations.
On February 22, 2017, the U.S. Supreme Court addressed the issue of whether the supply of a single component of a multicomponent invention qualifies as an infringing act under 35 USC §271(f)(1) of the U.S. Patent Act. In its decision in Life Technologies Corp. v. Promega Corp., the Court found that “a single component does not constitute a substantial portion of the components that can give rise to liability under §271(f)(1).” In doing so, the Court overturned the Federal Circuit’s prior holding that a single component could be sufficiently important to the invention to meet the criteria for being a “substantial portion.”
In Zircore, LLC v. Straumann Manufacturing, Inc. (E.D. Tex. 2017), as in many patent litigations since Mayo, Myriad, and Alice, the defendant moved to dismiss the infringement allegations contending that the patents in suit are ineligible subject matter under 35 USC § 101. Here, despite Straumann’s assertion that Zircore’s U.S. Patent No. 7,967,606 was invalid under § 101 as directed to an abstract idea, the court found that the claims were patent eligible under § 101 as directed to a method of manufacturing a physical object.
The District of Massachusetts recently grappled with the proper analytical standard when faced with a Fed. R. Civ. P. 12(b)(6) motion to dismiss in a patent infringement case. Judge Burroughs held that the familiar Twombly/Iqbal framework applied.
The America Invents Act (AIA) established a number of procedures for challenging a granted patent at the Patent Trial and Appeal Board (PTAB). While virtually anyone can challenge a patent using these procedures, not everyone has standing to appeal if the challenge does not go their way.
This issue was highlighted recently in a precedential decision from the Federal Circuit. In Phigenix Inc. v. ImmunoGen, Inc. (Fed. Cir. Jan. 9, 2017), the Federal Circuit held that a petitioner-appellant from an inter partes review (IPR) proceeding lacked standing to appeal the PTAB’s final written decision in federal court.
Last month the United States Patent and Trademark Office ("the Office") announced its cooperation in a Department of Justice investigation into a trademark scam perpetrated by two California men that defrauded about 4,446 people of $1.66 million. Trademark scams have been steadily on the rise over the past few years, which we have previously written about here. The current investigation resulted in the arrest of Artashes Darbinyan and Orbel Hakobyan, both of Glendale, CA, and their guilty pleas to charges of mail fraud and money laundering.
We have written previously about Scholz v. Goudreau, No. 13-CV-10951 (D. Mass.); the case recently went to trial on the parties’ surviving claims, and they are now immersed in post-trial briefing.
Tom Scholz and Barry Goudreau were once bandmates in BOSTON, and since Goudreau left the group in 1981, the two have occasionally litigated the trademark ramifications of his post-BOSTON career. The present dispute mostly arose from promotions tied to other musical acts and events that Goudreau was associated with.
Introducing a new how-to series about how to build a brand. Please check back periodically for the next article in our on-going series.
Licensing, Logo Protection, and Fair Use – Rounding Out Nutter’s How-To Series on Branding
Twelfth in The Series
Nutter’s series on building a brand began with the selection of a trademark and the process of formally protecting a mark via trademark registration. More recent articles in the series have addressed policing a brand, proper trademark usage, and brand considerations in the social media environment. This article, the last in the series, focuses on additional post-registration considerations, namely: (1) exploiting your mark through licensing, including important quality control considerations; (2) applying to register branding elements in addition to the core plain text mark to enable more effective policing of your brand’s entire commercial impression; and (3) assessing the unauthorized use of your brand by third parties (or using another’s mark without authorization) for purposes of determining whether such uses are “fair” or, on the other hand, harmful and actionable.
To read more, click here.
What to Do Once Your Trademark Registers—The Brand & New Media
Eleventh in The Series
Nutter’s series on building a brand began with the selection of a mark and the process of formally protecting it via trademark registration. At this point in the series, the mark is registered and ready for use and investment to elevate it into a brand. One area that can impact your brand is the use of your mark in “new media,” such as the Web and social media services. New media works differently than anything that has come before and there is a great deal to consider, from reserving domains and usernames to monitoring use—both your own and others’—across these mediums.
To read more about building a brand through new media, please click here.
What to Do Once Your Trademark Registers – Avoiding Genericism and Dilution
Tenth in The Series
As discussed in the previous article in Nutter’s IP Branding Series, monitoring competitors’ use of your marks and marks possibly akin to your marks, and enforcing your rights in your marks against those competitors, is an important aspect of protecting and building your brand. Equally important is policing your own use of the mark, the use of your mark by licensed third parties, and the use of the mark by third parties that are neither competitors nor licensees. The graveyard of brands that were arguably too successful because the brand name became genericised is fraught with lessons to be learned in protecting the use of your mark. Dilution is also a concern, although it is becoming increasingly more difficult to successfully show that your mark is being diluted or tarnished.
Click here to read more about guarding against your mark joining the generic graveyard.
What to Do Once Your Trademark Registers—Defensive Monitoring and Enforcement
Ninth in The Series
Our prior article in the series addressed the basics of what to do once your trademark registers, focusing mainly on your own use of the mark and supplemental submissions required to the United States Patent and Trademark Office (USPTO) in connection with your registration. Of course, your mark does not exist in a vacuum, and another category of activities you should undertake once your trademark registers involves monitoring the USPTO and other trademark offices for other potentially confusing or otherwise problematic marks and, where necessary, taking action to defend your mark. We also begin to address enforcing your mark through litigation, a vast topic that will be explored further in future articles.
To read more about monitoring, defending, and enforcing your mark, click here.
What to Do Once Your Trademark Registers – The Basics
Eighth in The Series
Following the conclusion of trademark prosecution, your certificate of registration has arrived in the mail. Now what? Over the course of the last three articles in our series, we will tackle this one, not so simple question. While a brand is nothing more than a mark (trademark or service mark) that has done well in life, like life, success comes with a little luck, and plenty of planning. Thus, obtaining the registration is truly just the beginning of your path to building a successful national or global brand. The present article will start with the basics—what you need to do to keep and maintain the trademark(s) you obtain.
To read more about keeping and maintaining your registered trademark(s) to help build and sustain your brand, click here.
Considering Your Brand during Trademark Prosecution
Seventh in The Series
The articles in our May and July editions of the IP Bulletin addressed eight of the most commonly asked questions that arise when completing a U.S. trademark application filing. Once the application has been filed with the USPTO, substantive examination by an examining attorney from the USPTO will commence in due course. In stark contrast to the long waits experienced by patent applicants, the average time between application filing and the issuance of a first Office Action is only 2.8 months at the time of this publication. There are many reasons why an examining attorney may initially reject a trademark application. When building a brand, an applicant should give special consideration to the response strategy before replying to any Office Action.
To read more about branding considerations when prosecuting trademarks, click here.
How to File a Trademark Application: The Guts of a U.S. Trademark Application (Part 2 of 2)
Sixth in The Series
The article in our May edition of the IP Bulletin addressed four of the eight most commonly asked questions that arise when completing a U.S. trademark application filing. More particularly, we considered the trademark application form that should be used, the classes of goods or services to include in the application, the items included in the description of goods and services, and appropriate and acceptable specimen of use to be included as part of the application. The other four most commonly asked questions are tackled in this article, including: (5) should I include color or design features as part of my trademark application; (6) what is my filing basis; (7) what is my date of first use; and (8) what other considerations should I be making when preparing my U.S. trademark application?
To read more about the essentials of a filing U.S. trademark application, click here.
How to File a Trademark Application: The Guts of a U.S. Trademark Application (Part 1 of 2)
Fifth in The Series
This fifth installment of Nutter’s continuing series on building a brand focuses on the essentials of filing a U.S. Trademark Application. The four commonly asked questions addressed in this article are: (1) what trademark application form should I use; (2) what classes of goods or services should I include in my application; (3) how do I decide what items I should include in my description of goods and services; and (4) what is an appropriate and acceptable specimen of use? Questions pertaining to color and design features, filing basis, dates for first use, and other considerations that should be made when preparing a U.S. trademark application will be included in our July edition.
To read more about the essentials of filing a U.S. Trademark Application, click here.
Where to File a Trademark Application: A Territorial Question
Fourth in The Series
Once you’ve checked off the five “Cs” and decided on the trademark you want to protect as part of building your brand, you next must decide where you want to file for protection. You see, even though Thomas Friedman has been driving the globalization “Lexus” since before the 21st century, and the reaches of the geography-obliterating, all-encompassing Internet and Mother Web connects Afghanistan to Zimbabwe, trademark rights themselves remain territorial. A single trademark application will not provide global property rights. This fourth article of Nutter’s branding series explores a trademark applicant’s various options regarding where to file a trademark application.
To read about three important territorial questions to consider when preparing a trademark application, click here.
Five “Cs” to Check-Off Your List Before You Decide on Trademarks
Third in The Series
This third installment of Nutter’s continuing series on building a brand focuses on considerations you should undertake before finalizing your selection of trademarks to build your brand. Before filing, consider taking the following five preliminary steps: (1) coordinate your efforts; (2) construct your trademark strategy; (3) conceive the overall design; (4) conduct a preliminary search; and (5) consider contacting an intellectual property professional. If you follow the five “Cs,” you can reduce the chances of finding yourself back at the drawing board coming up with a new idea for a trademark.
To read about how the five “Cs” can help make sure your branding strategy is on the up-and-up, click here.
Nutter's IP Bulletin How-To Series on Branding: Trademark Strong (or Weak?)
Second in The Series
This second installment of Nutter’s continuing series on building a brand begins to address issues faced by businesses in selecting a trademark. In particular, the issue of trademark strength is examined, as it can be an important factor in a branding campaign’s success.
To read more about the impact of trademark strength on mark selection, click here.
What is a Brand?
First in The Series
Branding is often an important part of commercial success for a company, product, or line of products. However, there is often confusion surrounding how to go about identifying potential brand names, selecting the best one, protecting that name, and enforcing protective rights to avoid losing the brand’s unique association with the product. In a series of articles in the next several IP Bulletins, Nutter will address these various legal aspects of branding. Today, we start at the beginning with a discussion of what a brand is, and how it relates to the legal world of trade and service marks.
To read more about branding, click here.
Maximizing the protection and value of intellectual property assets is often the cornerstone of a business's success and even survival. In this blog, Nutter's Intellectual Property attorneys provide news updates and practical tips in patent portfolio development, IP litigation, trademarks, copyrights, trade secrets and licensing.
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