MVS Filewrapper® Blog: Cancelation of Trademarks due to First Actual Use After Application

Post by Dan Lorentzen


Federal registration of a trademark provides a number of benefits to the trademark owner, including protection throughout the entire country, advantageous litigation position—for example presumption of validity and enhanced monetary damages—and enlistment of the U.S. Customs Service to stop importation of counterfeit goods. The federal trademark system provides two separate avenues for protecting a mark: (1) registration of a mark that is already used in commerce, and (2) certification of a bona fide intent to use the mark in commerce (ITU application), followed by a later demonstration of actual use.  However, failure to use the correct registration scheme can result in invalidation of the registration, and loss of the benefits of federal protection.


In its recent decision in Couture v. Playdom, the Federal Circuit Court of Appeals held that a trademark that was registered under the standard (i.e. non-ITU) system, but was not actually used in commerce until after the registration, was void.  The mark owner filed a registration including, as a specimen showing use of the mark, a screen capture of the mark owner's website.  At the time of filing, the website was a single page that advertised the mark owner's readiness, willingness and ability to render services.  The mark owner did not, however, provide any services under the mark until after the mark had been registered.  The mark was the subject of a cancelation proceeding, and the Trademark Trial and Appeal Board (TTAB) canceled the registration as void from the time of filing because the owner had not used the mark in commerce as of the date of the application.


On appeal, the Federal Circuit affirmed the TTAB's cancelation.  The court held that "use in commerce" for registration requires actual use in conjunction with the services described in the application, and not merely offering services.  The court further noted that, although ITU applications are available, and procedures for substitution of an ITU application for a standard application are available, such substitution is specifically provided for prior to publication and registration.  As a result, once a standard trademark application is published, it can no longer be converted into an ITU application. 


This case highlights the need for mark owners to understand when and how they use their marks.  For the incautious, failure to fully consider and communicate these use issues may result in loss of trademark rights. 


The full opinion is available here.  

MVS Filewrapper® Blog: Claim Preambles as Limitations– the Saga Continues

Post by Dan Lorentzen


The preamble of a patent claim normally recites some purpose or objective, but is generally not considered to limit the scope of the claim unless it "breaths life and meaning into the claim."  There are a number of ways that the preamble can take on patentable weight, including by serving as the antecedent basis for a limitation in the body of the claim. 


In Pacing Tech v. Garmin, the Federal Circuit added a new wrinkle to the analysis of whether a preamble can serve as a claim limitation.  Pacing Techs. sued Garmin asserting infringement of U.S. Patent No. 8,101,843.  The independent claim at issue recites a preamble of "[a] repetitive motion pacing system for pacing a user."  The body of the independent claim does not further incorporate the "repetitive motion pacing system," although the term "user" is repeated.  Further, a separate, dependent claim does recite "the repetitive motion pacing system." 


The Federal Circuit determined that the repetition of the term "user" and recitation of the "repetitive motion pacing system" in a separate claim were sufficient to render the preamble of the independent claim a limitation.  As a result, the court determined that practicing the independent claim was deemed to require repetitive motion pacing, and Garmin's accused product did not infringe the asserted claims. 


The decision increases the circumstances under which a claim preamble can be considered limiting.  As a result, it may become easier to limit the scope of a claim based on the stated intended purpose or object contained in the preamble. 


The full opinion is available here.

MVS Filewrapper® Blog: U.S. Takes Final Steps in Joining International Industrial Design System

Post by blog staff

The Hague system for registration of industrial designs offers applicants the potential for obtaining protection in a number of member countries and intergovernmental organizations by means of a single international application.  The system offers possible increased filing efficiencies and cost savings in pursuing protection for designs.

On February 13, 2015, the USPTO announced that the United States had deposited with the World Intellectual Property Organization (WIPO) its instrument of ratification to the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs, representing the last step for the United States to join the Hague system. As a result, the treaty, which has already been ratified but not put into law, will go into effect in the U.S. on May 13, 2015.

As discussed in a prior blog post, the proposed rules will allow applicants to file a single international design application, potentially seeking protection of their industrial design in more than 40 countries. U.S. applicants would be able to file their applications with the USPTO as an “indirect filing” and the USPTO would then transmit the application to WIPO for review. The USPTO will continue its examination of design applications and grant patents, whether the application is filed under the Hague Agreement or as a U.S. design patent application.

Final rules will soon be published in the Federal Register and are expected be effective on May 13, 2015. U.S. design patents granted on or after this date will have a 15 year term.

More information on the Hague industrial design system is available here and here, and the USPTO press release is available here.

MVS Filewrapper® Blog: Patent Exhaustion does not Apply to Related—but Distinct—Inventions

Post by Dan Lorentzen


The doctrine of "patent exhaustion" (also referred to as "first sale doctrine") is a judicially created limit on the exclusive rights of a patent holder.  Under the exhaustion doctrine, once a patent owner licenses or authorized a first production or sale of their invention, they cannot claim any damages arising from downstream sale or use arising from that authorized first production or sale.  The recent decision by the Federal Circuit in Helferich Patent Licensing v. New York Times has limited the exhaustion doctrine by holding that a first sale does not preclude a patent owner from enforcing their rights in a related, but distinct, invention.


Helferich owns U.S. Patent Nos. 7,280,838; 7,499,716; 7,835,757; 8,107,601; 8,116,741; 8,134,450; and 7,155,241, which relate to systems and methods for handling information and providing it to wireless devices, such as mobile-phone handsets, as well as handsets and methods of using them.  Helferich sued a number of defendants, including the New York Times, for infringement of the claims dealing with the systems and methods.  The defendants asserted patent exhaustion as a defense, claiming that by granting handset manufacturers licenses based on the handset claims of the patents at issue, and conferring broad authority to sell the handsets, Helferich had exhausted its ability to enforce its patents not only against acquirers of the handsets but also against the defendant content providers who use presumptively distinct inventions to manage content and deliver it to handset users.  The District Court granted summary judgment of non-infringement to the defendants based on this application of the exhaustion doctrine.


On appeal, the Federal Circuit reversed, concluding that patent exhaustion is not so broad as to cover distinct inventions, even if those inventions are specifically designed to be used with the licensed product and are essential to the licensed products utility.  The court deemed the application urged by the defendants to be an unwarranted expansion of the exhaustion doctrine.  The decision underscores the importance of understanding the scope of license agreements, as well as the scope of a potential licensee's patent portfolio. 


The full opinion is available here.

MVS Filewrapper® Blog: Updates to the Innovation Act

Post by Jill Link



The Filewrapper® Blog has previously reported on the Innovation Act as passed by the U.S. House of Representatives on December 5, 2013 (H.R. 3309) and the companion bill subsequently failing to pass in the senate (S. 1720). Last week a bipartisan bill was introduced by House Judiciary Committee Chairman Bob Goodlatte (R-Virginia) and again referred to as the "Innovation Act" (H.R. 9). The bill is now co-sponsored by Representatives Peter DeFazio (D-Oregon), Darrell Issa (R-California), Anna Eshoo (D- California), and Lamar Smith (R-Texas). To be clear, this is the same legislation passed in 2013 by the House of Representatives and now brought during the inauguration of the 114th U.S. Congress.

The Innovation Act is primarily focused on addressing perceived increases in abusive patent litigation by non-practicing entities (often referred to as “patent trolls”). Supporters of the bill state their intention of curbing patent litigation which only seeks to obtain settlement payments from defendants in an effort to pay the millions of dollars it can cost to proceed through a patent infringement trial.  The bill outlines heightened pleading standards, including requiring a patent plaintiff to name the owner of the patent and whether there is any financial harm as a result of the alleged patent infringement. In addition, the bill provides for a fee-shifting provision that requires courts (with some exceptions) to award the prevailing parties reasonable attorneys' fees and other expenses when the court concludes the action was a frivolous lawsuit or claim. 

The Innovation Act also requires a court to make early decisions regarding patent validity in an effort to avoid a patent case being litigated when claims may ultimately be found to be invalid. For example, there would be required delays in the discovery process until after claim construction is determined. In addition, the Judicial Conference would be required to set forth rules aimed to decrease costs associated with discovery (which often creates a barrier to small businesses and other entrepreneurs pursuing patent litigation).

There is also a voluntary process for small businesses to postpone patent lawsuits while larger sellers complete similar patent lawsuits against the same plaintiff. Similarly, the act allows a manufacturer to intervene in a lawsuit against its customers and have the action stayed for the customer if both the customer and manufacturer agree. 

MVS and the Filewrapper® Blog will continue to bring updates on the progress of the House and Senate as the Innovation Act is again considered in 2015.



MVS Filewrapper® Blog: Federal Circuit Upholds First IPR Decision

Post by Dan Lorentzen


The America Invents Act (AIA) included provisions establishing new "trial" procedures at the USPTO Patent Trial and Appeal Board (PTAB) for testing the validity of issued patents.  One such procedure, Inter Partes Review (IPR), has quickly become a common alternative or addition to traditional patent litigation since it was implemented in September of 2012. However, a number of issues relating to the operation and review of the new USPTO trial procedures have remained unresolved.


A three-judge panel of the Federal Circuit has upheld the decision of the PTAB in the very first IPR filed.   The Federal Circuit affirmed all of the PTAB's determinations, finding that the PTAB was not in error in applying the broadest reasonable interpretation (BRI) standard to the claims in the IPR proceeding, the PTAB properly determined obviousness, and the PTAB properly denied the patent owner's motion to amend the claims. 


Notably, the Federal Circuit declined to review the decision by the PTAB to institute the IPR.  The patent owner argued that the PTO improperly instituted the IPR on two of the patent claims because it relied on prior art that the party seeking the IPR did not identify in its petition with respect to those two specific claims.  The pertinent portion of the AIA (encoded in 35 U.S.C. § 314) provides that “[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable.”  The patent owner asserted that this provision merely postpones review of the PTO’s authority until after the issuance of a final decision by the Board.  The Federal Circuit, however, concluded that § 314 prohibits review of the decision to institute IPR even after a final decision.  The court did note that mandamus may be available to challenge the institution of an IPR where the PTO has clearly any indisputably exceeded its authority. 


Although disagreement remains as to whether the Federal Circuit was correct in its determinations (see, e.g., Judge Newman's dissenting opinion), the decision provides some clarity as to the standards that apply during IPR proceedings at the USPTO.  The full decision is available here.

MVS Filewrapper® Blog: USPTO Issues Examples of Abstract Ideas and Claim Eligibility

Post by Luke T. Mohrhauser



A threshold requirement for obtaining a patent is that the subject matter must meet eligibility requirements. Recent changes from the Supreme Court have impacted the types of patent eligible inventions as they relate to abstract ideas. In response to these changes the USPTO recently issued a set of Examples of claims including abstract ideas that both satisfy and do not satisfy the recently issued 2014 Interim Eligibility Guidance.


            For reference, the Guidance provides a two-step approach for determining subject matter eligibility, where Step 1 determines whether the claim is directed to a process, machine, manufacture, or composition of matter. Step 2 is a two-part analysis where an examiner first determines whether the claim is directed to a law of nature, a natural phenomenon, or an abstract idea (judicial exceptions). If no, the claim is eligible and examination should continue for patentability. If yes, the analysis proceeds to Step 2B to analyze whether the claim as a whole amounts to significantly more than the exception. At Step 2B, an examiner is to determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception. This includes an analysis of the remainder of claim elements and how they add any inventive step to the claim.


            The Examples go through the analysis of explaining each part of the two-step approach to show how the claims all meet Step 1, but vary with regard to Step 2. There is a good presentation of the analysis of both Steps 2A and 2B, and how the various claim examples relate to Supreme Court precedent. For example, in claims where it is determined that the limitations are directed towards an abstract idea, the explanation of how any additional elements add enough of an inventive step to overcome the abstract idea can be very helpful.


            The Examples issued by the Patent Office include four claim sets that were deemed patent eligible, and four that were found ineligible.



Patent Eligible


            Examples of claims that were or would be patent eligible include the following:


1.      A method and computer medium for isolating and removing malicious code from electronic messages. The claims were not directed towards an abstract idea because they included a concept inextricably tied to computer technology and distinct from the types of concepts found by the courts to be abstract.


2.      E-Commerce Outsourcing System/Generating a Composite Web Page.  The claim was found not be directed towards an abstract idea because it does not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.


3.      Methods and systems for halftoning a gray scale image. In the three claims provided in the Example, it is stated that they include mathematical steps that would constitute an abstract idea. However, the additional analysis of Step 2B above leads to a finding that taking all the additional claim elements individually, and in combination, the claim as a whole amounts to significantly more than the abstract idea of generating a blue noise mask, and therefore, the claims contain patent eligible subject matter.


4.      A method and system for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals. The claims include calculating steps, and therefore, include mathematical equations that would make them abstract ideas. However, the additional limitations of the claim placed upon the application of the claimed mathematical operations show that the claim is not directed to performing mathematical operations on a computer alone. Rather, the combination of elements impose meaningful limits in that the mathematical operations are applied to improve an existing technology (global positioning) by improving the signal-acquisition sensitivity of the receiver to extend the usefulness of the technology into weak-signal environments and providing the location information for display on the mobile device, which indicates that the claims include patent eligible subject matter.


Patent Ineligible


            Examples of claims that were or would be patent ineligible include the following:


1.      Method of generating a device profile by generating first and second data and combining the same. While the claim met Step 1 of the analysis, it was found to be a mere gathering and combination that employed mathematical relationships, thus making it an abstract idea. The claim did not include any additional steps beyond the abstract generating and combining and thus, failed Step 2, making the claim ineligible.


2.      Computer system for electronically managing a game of Bingo. The claim included a computer and a program run on the computer. The program included steps that could be performed mentally, making the claim an abstract idea. The mere inclusion of a computer with a CPU did not add enough of an inventive step under Step 2B to overcome the abstract idea, and the claim was found to include ineligible subject matter.


3.      Methods for conducting reliable transactions in an e-commerce environment. The claim included steps of creating a contractual relationship, which is an abstract idea. Analyzing the claim as whole for an inventive concept, the claim limitations in addition to the abstract idea include a computer application running on a computer and the computer network. This is simply a generic recitation of a computer and a computer network performing their basic functions. Therefore, the claim is not patent eligible.


4.      A method for distribution of products over the Internet via a facilitator. The claim describes the concept of using advertising as an exchange or currency. This concept is similar to the concepts involving human activity relating to commercial practices (e.g., hedging in Bilski) that have been found by the courts to be abstract ideas. When viewed either as individual limitations or as an ordered combination, the claim as a whole does not add significantly more to the abstract idea of using advertising as an exchange or currency (The answer in Step 2B is no). The claim is not patent eligible.


These Examples should help both Applicants and Examiners navigate the new patent eligibility landscape under the Supreme Court's recent holdings on 35 U.S.C. § 101. 



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