Friday, October 9, 2009

USPTO Rescinds Controversial Patent Regulations Package

Yesterday the US Patent and Trademark Office rescinded the controversial Patent Regulations Package, which limited the number of continuation applications as well as the number of claims that could be included within each application.  The regulations were published in the Federal Register in August 2007, but were enjoined and never came into effect.  The full text of the USPTO Press Release is found here.

Thursday, October 8, 2009

Apple's New Mouse Will be no Mighty Mouse!

Last week rumors surfaced that Apple would release a new computer mouse.  The new mouse was to be named MIGHTY MOUSE but on Tuesday of this week, Men & Machine were awarded a Trademark Registration by the US Patent and Trademark Office for the mark MIGHTY MOUSE.

Previously, Apple had obtained a license from Walt Disney to use the mark MIGHTY MOUSE because it was using the mark on different goods than the famous Disney cartoon character.

The Men & Machine registration however is for computer peripherals and will block Apple's use.  It remains to be seen if Apple will conjure up a new trade mark to use with its new mouse or will purchase a license or assignment from Men & Machine.

Wednesday, October 7, 2009

US Patent Office Proposes Changes to Examiner Count System

US patent examiners operate under a "count system" in which they earn points for performing tasks during the examination of a patent application.  The count system has not been revised since 1976.  The revisions are designed to improve the examiner's working condition, give examiners more examination time and ultimately allow examiners to process applications more quickly.

As the USPTO revises its system, we will also revise our prosecution strategies to compliment the revisions in an effort to benefit our clients.

The full News Release is  available here.

A patent examiner has provided his perspective on the proposed changes here:

Tuesday, October 6, 2009

Hold on to your Blackberrry – More Damages to pay?

As you may recall, in 2006 Research in Motion (RIM), the owner of Blackberry, paid $612.5 million to patent owner NTP to settle a patent infringement lawsuit.
The US 4th Circuit Court of Appeals, in Richmond, VA in September heard a Freedom of Information Act (”FOIA”) based lawsuit filed by NTP.  The lawsuit is intended to uncover details about the relationship between RIM and the US Department of Justice at the time of the 2006 settlement.
The US Government was the largest user of Blackberry’s and relied upon their reliable secure data functionality.  What NTP lawyers did not know at the time of the settlement was the Justice Department had entered into a “common-interest” agreement with RIM to advance governement interests in the patent infringement dispute.
The Justice Department allegedly withheld over 300 documents related to the effect of injunction on government Blackberrys.
Although common interest agreements are legal, questions remain concerning whether the terms of the deal should have remain private to NTP.  RIM may face additional pressure if the documents from the FOIA suit are revealed and additional limitations may be placed on the use of common interest agreements that effect settlement agreements between adverse parties.

Appeals of Patent Applications to the US Patent and Trademark Office Board of Patent Appeals and Interferences increases 41.7% between 2008 and 2009

A US Patent Application that is finally rejected by a patent examiner may be appealed to the Board of Patent Appeals and Interferences (“BPAI”).  The increase in the number of appeals would not come as a surprise to members of the patent bar because the rejection rate for new patent applications has increased dramatically since the 2007 landmark US Supreme Court Decision of KSR v Teleflex. The KSR case limited patentability by eliminating the requirement that a patent examiner show that there is some teaching, suggestion or motivation (known as the “TSM test”) in the prior art to combine references for an obviousness type rejection of the claim(s) of a patent application. The TSM test was not eliminated, but became just one factor to consider. The result has been patent examiners now routinely combine prior art references to assemble the elements in the claims of a patent application to form a basis for rejecting the patent application. This has led the increase in appealed patent applications. In 2008 6,385 applications were appealed, while in 2009 15,500 applications are projected to be appealed at the current appeal rate.

The increase in appealed patent applications has resulted in a delay from filing of the appeal, to decision of from 21 to 37 months.  The BPAI has said that it has plans to bring in more judges, together with patent attorneys and paralegals, but it admits that funding is not currently available for an increase in staffing.
For now, the most effective strategy, for the inventor and his/her patent attorney, is to avoid an appeal altogether by interviewing, in person, with the patent examiner, and at least one Supervisory Patent Examiner. Collectively a realistic evaluation of the prior art cited against the patent application can be made to define the patentable subject matter to result in an allowance of the patent application.

REDSKINS Trademark Dispute May Go to US Supreme Court

Attorneys for the petitioners who filed a complaint against the use of the term REDSKINS for the Washington pro football team filed a Petition for Writ of Certiorari with the US Supreme Court on Monday of this week.
In 1992, Suzan Harjo led seven Native Americans in petitioning the Trademark Trial and Appeal Board (“TTAB”) to cancel six trademark registrations used by the Washington Redskins and owned by Pro-Football, Inc. The TTAB granted the petition, and the owner appealed to the United States District Court for the District of Columbia, which overturned the cancellation on two grounds. The District Court found that the TTAB lacked substantial evidence to find disparagement, and that the petition was barred by laches – an equitable legal theory which prohibits a party from waiting so long to file a claim that it becomes unfair to the other party. The Redskins had registered their marks as early as 1967 – when the youngest of the complainants was one year old. The complainants then appealed this decision to the DC Court of Appeals.
The Court of Appeals upheld the District Court’s holding that laches was a valid defense in a disparagement case. It vacated the District Court’s application of laches to one of the complainants, however, and remanded the case for further consideration on that issue only. It retained jurisdiction over the rest of the case (including the question of whether the TTAB’s decision had been supported by substantial evidence), pending the District Court’s resolution of the laches issue.
The Native Americans claimed that laches should not apply to a disparagement claim at all, because the law specifies that such a claim can be brought “at any time”. The Court rejected this, noting that other language in the same statute specifically permits equitable defenses, and laches is such a defense. The Court then considered the applicability of laches to the case at hand. Because the defense depends on the laxity of the plaintiff in pursuing his rights – which can not effectively be pursued until the plaintiff has reached the age of majority – the Court found that the defense could not be applied against the one plaintiff who had been a minor until recently, and therefore that the plaintiff had not slept on his rights.
The Court acknowledged the assertion by the owner that this finding would leave trademarks disparaging a group with a constantly expanding population “perpetually at risk”: The fact that Pro-Football may never have security in its trademark registrations stems from Congress’s decision not to set a statute of limitations and instead to authorize petitions for cancellation based on disparagement “at any time”.
The case was remanded to the United States District Court for the District of Columbia for further proceedings. In July 2008, that court found that the doctrine of laches was still applicable to the particular plaintiffs in this case, because the youngest plaintiff had turned 18 eight years before the case was filed.
The Writ of Certiorari will concern the question of whether a disparagement claim is barred by laches or if it may be brought at any time. A response to the Writ is due by October 16, 2009. Of the approximately five thousand cases a year for which review by the US Supreme Court is sought, fewer than 5 % are granted Certiorari. If the case is denied Cert, the decision below will stand, and the REDSKINS trademark will not be impacted.

Multimedia Time Warping Patents Net TiVo $304 Million in Damage Awards

On September 4th, TiVo won an additional $200 million in damages for several of the patents that cover time warp recording of audio-video displays. The patents at suit were: US-6233389, US-7529465 and US-7493015. The damages were awarded by a federal judge in Marshall, Texas against Dish Network. TiVo earlier won damages of $104 million against AT&T and Verizon Communications. See the full story here.

Google Obtains Design Patent for its 2004 Home Page – So What?

This week Google obtained a US Design Patent for its search engine home page from 2004.  See the Patent at D599372.  A design patent is much narrower and weaker than a utility patent.  While a design patent only protects the ornamental features of an article, a utility patent protects the functional aspects.  Moreover, for an infringement of a design patent to occur, the accused design must be substantially similar, and nearly identical to the design shown in the design patent.
Google’s current home page is significantly different than the 2004 home page that it patented so the value of its patent may be more for the portfolio or wall dressing than an offensive tool to prevent infringement.

US Court of Appeals for the Federal Circuit Rules the Trademark Board Erroneously Lowered the Fraud Standard in Trademark Cases to Simple Negligence

On August 31, 2009 the US Court of Appeals for the Federal Circuit (“CAFC”) ruled in In Re Bose Corporation, 2008-1448 (CAFC) that “a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO [US Patent and Trademark Office].”
During the opposition that was tried by the Trademark Trial and Appeal Board (“TTAB”), which was filed by Bose, for its mark WAVE (TM Reg. No. 1,633,789) against the mark HEXAWAVE, the owner of HEXAWAVE counterclaimed that Bose had committed fraud in the renewal registration Under Sections 8 & 9 because the mark had not been used on all of the goods in the WAVE registration. The general counsel for Bose included the goods audio tape recorders and players, even though those goods were not being sold in commerce. However, the goods were being repaired and the general counsel believed that transporting repaired goods having the WAVE trademark constituted use in commerce. The TTAB held that the general counsel’s belief was not reasonable, and that the use statement in Section 8/9 renewal was material. Therefore, the TTAB concluded that the general counsel had committed fraud on the US Patent and Trademark Office (“PTO”) and cancelled the entire WAVE trademark.
The CAFC found that the TTAB had “consistently and correctly acknowledged that there is ‘a material legal distinction between a ‘false’ representation and a ‘fraudulent’ one, the latter involving an intent to deceive, whereas the former may be occasioned by a misunderstanding, an inadvertence, a mere negligent omission, or the like.” Kemin Indus., Inc. v. Watkins Prods., Inc., 192 USPQ 327, 329 (T.T.A.B. 1976). In other words, deception must be willful to constitute fraud. Smith Int’l, 209 USPQ at 1043.
Ultimately, the CAFC concluded that by equating “should have known” of the falsity with a subjective intent, the TTAB erroneously lowered the fraud standard to a simple negligence standard. In re Bose Corporation, 2008-1448 at 6.

Web hosters ordered to pay $32M for contributing to trademark infringement

A federal jury in California has found two Web hosting companies and their owner liable for contributing to trademark and copyright infringement for hosting sites selling counterfeit Louis Vuitton goods.
In a verdict handed down last week, the jury assessed damages totaling more than $32 million against hosting companies Akanoc Solutions Inc., Managed Solutions Group Inc., both in Fremont, Calif., and Steven Chen, the owner of the two companies. In awarding the damages, the jury agreed with Paris-based Louis Vuitton Malletier S.A.’s claims that the defendants knowingly allowed several Web sites they hosted to sell products that infringed Louis Vuitton’s copyrights and trademarks.

IBM Files US Patent for Facebook Remote Control

IBM has filed a US Patent Application for a Facebook, or other blog site, remote control.  A copy of the published application is available here:

Monday, October 5, 2009

274 green patents filed in second quarter

Green technology, and resulting I.P. protection of the new technology are going to be a hot growth area in the new economy.
See for an example of the growth on this area, especially in the area of fuel cells.

Sound Trademark Dispute: Ride the Ducks v. Bay Quackers

In a recent sound trademark dispute, Bay Quackers, a San Francisco tour company featuring an amphibious truck in which tourists “quack” with a kazoo, violates the registered trademark of competitor Ride the Ducks. Based in Norcross, Ga., Ride the Ducks operates amphibious sightseeing tours around the country See the full article at Any indication of source or origen can be protected with a trademark including not only sounds, but scents.  Harley Davidson has attempted to obtain a sound trademark for its exhaust sound and the application was approved by the Trademark Examiner in April of 1995.  The mark was opposed by the major motorcycle manufacturers and was later abandoned.