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Two Key Things You Need to Know About the 2016 Federal Rule Changes

Posted in Legal Info

On December 1, 2016, amendments to the Federal Rules of Civil Procedure (“FRCP”) and Federal Rules of Appellate Procedure (FRAP) took effect.  While at first glance, the changes may not seem dramatic, but changes such as shortening the time to respond and cutting word counts for briefs have a direct impact on our practices.  For example, this year’s changes include the following:

  1. Eliminating the 3-day rule; and
  2. Reducing word counts for certain appellate filings.

Under the previous 3-day rule, parties receiving a document by means other than personal delivery, which was considered immediate service, could add three days to the response time calculated from the date of service.  This included adding three days when served electronically, including service by email and the electronic case filing (ECF) notice system.  In other words, items served electronically were not treated as received immediately even though they often were received virtually instantaneously.  In the past, concerns related to reliability, transmission delay and incompatibility of systems led to the perception of a need for maintaining the 3-day rule for electronic service, but times have changed.  In addition, other rules have been changed in an attempt to simplify time computations by adopting periods that are multiples of 7 to allow for “day-of-the-week” counting.  The 3-day extension re-complicated the intended simplification and caused more dates to fall on weekends and holidays thus requiring further adjustments.Jo-Dale-Carothers-015_web

With advances in technology and skills of computer users and the desire to further simplify time computation, the 3-day rule has been eliminated for responses triggered by electronic service of a document.  This was accomplished by amending FRCP 6(d) and FRAP 26(c) to exclude electronic service from the modes of service that allow for three additional days to act or respond. It is important to note, however, that some courts have promulgated local rules that retain the 3-day extension.  For example, the Ninth Circuit will continue to provide three additional days for electronic service for deadlines based on service of another document.

The Committee Notes regarding the change to Rule 6 recognize that this amendment can effectively shorten the time to respond relative to current practice, particularly when documents are served late at night or just prior to, or during, a weekend or holiday.  Therefore, they noted that extensions may be warranted to prevent prejudice.  In practice, however, one cannot afford to take such extensions for granted, particularly if opposing counsel objects.

The Supreme Court ordered that the amendments to FRCP 6(d) and FRAP 26(c) govern in all federal civil and appellate cases, respectively, commenced after December 1, 2016 and “insofar as just and practicable, all proceedings then pending.”  But, it is not clear how courts will apply these amendments to pending cases.  For example, will amended Rule 6(d) apply to all papers served after December 1, 2016, even in cases pending prior to that date or will courts continue to apply the prior rule for service of papers in such cases?  Similar questions arise in the appellate context.  It will be critical to consult the specific rules applicable for each case to avoid missing deadlines!

In another amendment to the FRAP, word-count limits have been reduced for certain appellate filings and implemented in place of page limits for other filings.  For some time, parties did not have to comply with page limits for appellate briefs if they complied with certain word-count limits.  Page limits, however, were still imposed on other papers, such as motions and petitions.  In the most recent amendment to the FRAP, word-count limits have been instituted for, among other filings, motions, amicus briefs, and petitions for rehearing en banc.  Further, word counts for opening, response, and cross-appeal response and reply briefs have been reduced from 14,000 to 13,000 words.  For cross-appeal opening and response briefs, the word count was reduced from 16,500 to 15,300, and for reply briefs, the word count was reduced from 7000 to 6500.  You just thought the prior word counts were tight!  Now they are tighter.

These word-count changes took effect on December 1, 2016, but some circuits have opted out in favor of their own local rules.  For example, the Ninth Circuit has adopted a local rule that will maintain the current word count limits for briefs and will maintain the current page limits, rather than word counts, for motions and petitions.

In summary, while the new rules are now in effect, courts are varying in whether they are applying the new rules at all and, if so, how they are applying them to pending cases.  Therefore, it is more important than ever to compare the local rules with the federal rules to determine whether your cases are subject to these amendments.  If so, then be prepared to respond sooner and, in appellate cases, more concisely!

Holiday Horror Series: Part 1- Could You Patent Christmas?!

Posted in Copyright Law, Patent Law

The holidays are upon us.  Given that everything seems to be protected by intellectual property rights, could someone protect Christmas?

The most likely candidate to try to patent Christmas would be Santa Claus.  But (assuming all other issues are addressed), could Santa Claus really patent Christmas? Assuming that Santa Claus invented Christmas, then perhaps he could! U.S. patent law provides patent protection for pretty much everything. Under the patent laws of the U.S. and most foreign countries, the first person to invent something may file a patent application seeking a patent for that invention. Unlike most foreign countries, however, U.S. law provides a one-year grace period in which a patent application can be filed after certain types of public disclosures by the inventor.

So, maybe Santa Claus could file a patent application in the U.S. if he was the first to invent something that has not been publicly disclosed in the last year.  Of course, there may be no one else claiming to have invented Christmas, so it might not be much of a problem. And, because Santa has been operating in secret for hundreds of years, there cannot have been any public disclosures.

Santa might even be able to patent the method he uses to deliver gifts to every child all around the world on Christmas Eve.  His method might be treated as a business method, which could make it more difficult to patent, even though it is not really a “business.”

What other kinds of Christmas inventions could someone patent?  The United States Patent and Trademark Office lists over 980 U.S. patents with the word “Christmas” in the title.  These patents cover items like Christmas lights, decorations, Christmas tree stands and turntables, antler apparatus, Christmas tree watering devices, fire extinguishers, and many other things.  My personal favorite is the “Apparatus to Prevent Pets Climbing a Christmas Tree.”  The need for this invention is obvious if you have ever had kittens or cats around your Christmas tree.  The patent states: “as is generally well known in the prior art, pets, such as cats, like to climb up the branches of a Christmas tree. Oftentimes this will result in knocking some of the ornaments off such tree.  These ornaments may be broken…”  The invention is basically a giant circular screen that clips under the lowest branches of the tree. Based on my experience, however, this device will have precisely the opposite of its intended effect. Any cat who sees the screen will climb up or jump onto it.  And, anyway, who really wants to stop cats from climbing Christmas trees?!  It’s too much fun to watch them perched on the branches and swatting ornaments (and to see their embarrassed looks when they land clumsily on the floor)!

What about a new type of Christmas tree?  Trees (and all plants) are patentable, as long as they are new and developed by humans, not discovered in nature.  In fact, a flying reindeer would be patentable (if it was created by humans), as living organisms can be patented.

How about a new nose for Rudolph — one that allows Santa to turn it on remotely from the sleigh?  The nose could be patentable, as could the software that runs it.

New designs for Christmas stockings and ornaments?  The designs for these objects (separate from the objects themselves) are patentable as design patents.  A design patent offers less protection than a utility patent and has a shorter lifespan, but it does protect against designs that are substantially the same as the patented design.

Maybe Santa could protect signature laugh (“Ho, Ho, Ho!”) or his red suit.  The phrase could be trademarked, just as business names and logos, as long as Santa uses it in commerce and was the first to use it.  The red suit might be protectable as a trademark or possibly as trade dress, or more likely as a design patent.  Unlike a patent that expires, however, a trademark has the advantage of lasting indefinitely.

What about your favorite Christmas carol?  The traditional carols are now in the public domain and belong to everyone, but any new song (lyrics and music) is protected by copyright as soon as it is created.  Unlike a trademark, copyright protection only lasts for the life of the author plus a specific number of years.

How about Christmas cookies?  Or that special eggnog recipe? Recipes can be protected and are usually best protected as trade secrets, provided that they are not easily reverse-engineered.  (Think how long Coca-Cola has been around, and it’s still a secret.)

Of course, the most important thing about Christmas is not what can be protected under the law, but the spirit of giving and sharing the holidays bring.  So, have a wonderful holiday season and may the New Year be filled with peace and joy!


Stay tuned for Part 2 of our Holiday Horror Series on December 2nd.

Supreme Court May Cut Back Laches in Patent Infringement Cases

Posted in Copyright Law, Patent Law

Audrey Millemann 03_webThe United States Supreme Court is considering whether the doctrine of laches will bar a patent infringement claim filed within the Patent Act’s six-year damage limitations period set forth in 35 U.S.C. §286.  The case before the Court is SCA Hygiene Products AB v. First Quality Baby Products LLC, 767 F.3d 1339 (Fed. Cir. 2014).

SCA owned a patent for adult incontinence products.  In 2003, SCA sent First Quality, a competitor, a cease and desist letter, accusing First Quality of infringement.  First Quality responded that it did not infringe SCA’s patent because the patent was invalid.  In 2004, SCA filed an ex parte reexamination of its patent.  The patent was confirmed in 2007.  SCA did not inform First Quality of the reexamination.  During this time, First Quality invested heavily in expanding its business.  In 2010, almost seven years after first notifying First Quality of its infringement, SCA filed an infringement suit against First Quality.  First Quality moved for summary judgment of non-infringement on the grounds that laches barred the claim.  The district court granted First Quality’s motion.

The defense of laches requires the defendant to prove an unreasonable and inexcusable delay by the plaintiff in filing suit and prejudice to the defendant.  In determining whether laches is a defense, a court must balance the equitable factors, including the length of the delay, the severity of the prejudice, the plaintiff’s excuses for the delay, and the defendant’s culpability.  A delay of more than six years establishes a presumption that the delay is unreasonable and inexcusable and caused prejudice to the defendant.  The burden the shifts to the plaintiff patent owner to produce evidence that the delay was excusable or not unreasonable, or that the defendant was not prejudiced.  If the plaintiff satisfies this burden, then the defendant must prove the elements of laches.

On appeal to the Federal Circuit, SCA argued that laches should not apply to a claim brought within the six-year limitations period for damages, and that the time that its patent was under reexamination (three years) should not count, meaning that its suit was filed only four years after SCA learned of First Quality’s infringement.

The Federal Circuit rejected SCA’s argument and affirmed the district court’s decision granting summary judgment for First Quality.  The court held that the presumption of laches was established because SCA’s delay exceeded six years.  The court further held that SCA had not met its burden to produce evidence of excusable or reasonable delay, or lack of prejudice to First Quality.  The court explained that it was not reasonable for SCA to delay almost three years after the reexamination concluded to file suit against First Quality – SCA should have sued First Quality earlier.  With respect to prejudice to First Quality, the court held that First Quality had suffered prejudice as a result of SCA’s delay because it had invested in expanding its product line during that period of time.

SCA’s petition for certiorari to the Supreme Court was granted on May 2, 2016.  SCA relied on a 2014 Supreme Court case (Petrella v. Metro-Goldwyn-Mayer, 134 S. Ct. 1962 (2014)) that held that laches does not apply to copyright infringement cases brought within the three-year damage limitations period of the Copyright Act.  SCA argued that the rationale of Petrella should apply to patent infringement cases – laches should not apply during the six-year damage limitations period set forth in §286 of the Patent Act.  First Quality argued that the reasoning of Petrella should not apply.  First Quality contended that §286 is not a statute of limitations (which requires a plaintiff to file suit within a specific period of time after learning of its claim), but a merely a backwards limit on the recovery of damages.

On November 1, 2016, the Supreme Court held oral argument.  The justices were sympathetic to SCA’s position, asking First Quality why laches should remain a defense when the patent statutes do not specifically provide for the defense.  Based on the oral argument, those following the case predict that the Court will reverse the Federal Circuit’s decision and hold that laches does not apply to patent infringement suits brought within the six-year damage limitations period.


Federal Circuit Takes A Common Law Approach to “Abstract Idea” Determinations in Alice Cases

Posted in Copyright Law, Entertainment Law, Legal Info, Patent Law, Trademark Law, Web/Tech

By:  Eric Caligiuri

In Amdocs (Israel) Ltd. v. Openet Telecom Inc. et al., the U.S. Court of Appeals for the Federal Circuit recently upheld four software patents against a patent-eligibility challenge, finding that the patents do not claim an “abstract idea.”  The patent challenge was under the frame work set out by the U.S. Supreme Court in its 2014 decision Alice Corp. v. CLS Bank.  In Alice, the Supreme Court looked at the patentability of software patent claims under Section 101 by applying the two-step test it had set forth in Mayo v. Prometheus.  In applying the two-step test, the Supreme Court instructed lower courts to first determine whether the claims are directed to an abstract idea.  If they are, the second step is to determine whether the claims include elements showing an inventive concept that transforms the idea into a patent-eligible invention.  While the Court in Alice stated it was treading carefully in invalidating the claims at issue and warned that applying the decision too broadly could “swallow all of patent law,” numerous patents have been invalidated by lower courts in light of the decision in Alice.

The Federal Circuit’s recent holding in Amdocs is a notable departure from this trend.  It held there is no single rule on what constitutes an abstract idea, and instead applied a common law approach in analyzing the claims by comparing the claims to claims in prior cases.  In so doing, the Federal Circuit also blurred the lines between the two distinct steps in the Alice two-step framework.  Also of importance, the Federal Circuit used claim constructions and limitations found in the specification in finding the claims patent-eligible, paving the way for district courts to follow suit in making their patent-eligibility determinations under Section 101 for software patent claims.

The Amdocs v. Openet dispute traces back to 2010 when Amdocs sued Openet for patent infringement of four patents in the Eastern District of Virginia.  The four patents at issue in Amdocs are all part of the same family, and the invention disclosed therein generally comprises parts of a system designed to solve an accounting and billing problem faced by network service providers by allowing network service providers to account for and bill for internet protocol (“IP”) network communications.  After a lengthy procedural history, the District Court Judge found on a motion for judgement on the pleadings that the patents were directed to abstract ideas under the Alice framework because they were essentially directed to using a database to compile network usage information.  On appeal, the Federal Circuit disagreed.  The Federal Circuit held that the patents use unconventional new technological solutions like “distributed architecture,” to minimize the impact on network resources, rather than storing all the data in a central database.eric_caliguiri_web

In its analysis, the Federal Circuit first noted that in the application of the Supreme Court’s Alice standard, “there is considerable overlap between step one and step two, and in some situations th[e] analysis could be accomplished without going beyond step one.”  The Federal Circuit reasoned this is the case because whether the “analysis is undertaken at step one or at step two, the analysis presumably would be based on a generally-accepted and understood definition of, or test for, what an ‘abstract idea’ encompasses.”  However, the Federal Circuit then went on to note there is presently no “single, succinct, usable definition or test” for determining what constitutes an abstract idea, although “that is not for want of trying” by courts.  “Instead of a definition, then, the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen — what prior cases were about, and which way they were decided.”  Therefore the Federal Circuit explained “that is the classic common law methodology for creating law when a single governing definitional context is not available. We shall follow that approach here.”

Turning to the claims at issue, the Federal Circuit instructed that the claims should be analyzed “in light of the written description…in addition to taking into consideration the approved claim constructions.”   The Federal Circuit reasoned that while the claim limitations “may be generic at first blush, an examination of the claim in light of the written description reveals that many of these components and functionalities are in fact neither generic nor conventional individually or in ordered combination.”

In particular, the court relied on the unconventional technological solution of enhancing data in a distributed fashion to solve the technological problem of massive record flows which previously required massive databases.  Although, the solution requires arguably generic components, including network devices and “gatherers” which “gather” information, the Federal Circuit reasoned “the claim’s enhancing limitation necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.”   The Federal Circuit continued that “the enhancing limitation depends not only upon the invention’s distributed architecture, but also depends upon the network devices and gatherers—even though these may be generic—working together in a distributed manner.”  Thus, the claim “limitation necessarily involves the arguably generic gatherers, network devices, and other components working in an unconventional distributed fashion to solve a particular technological problem.”  In sum, the claims are “narrowly drawn to not preempt any and all generic enhancement of data in a similar system and do[] not merely combine the components in a generic manner, but instead purposefully arrange[] the components in a distributed architecture to achieve a technological solution to a technological problem specific to computer networks.”

In dissent, Circuit Judge Jimmie Reyna strongly disagreed with the Federal Circuit majority.  He criticized the majority’s approach involving “the mechanical comparison of the asserted claims in this case to the claims at issue in some, but not all, of the cases where we have addressed patent eligibility after the Supreme Court’s decision in Alice.”  The majorities’ approach “avoids determining whether the asserted claims are directed to an abstract idea, or even identifying what the underlying abstract idea is,… [and] is contrary to the Supreme Court’s direction in Alice.”  Moreover, “the majority also relies on the specification to import innovative limitations into the claims at issue…[which] contravenes the fundamental principal that the section 101 inquiry is about whether the claims are directed to a patent-eligible invention, not whether the specification is so directed.”

After numerous rulings in district courts and at the Federal Circuit in the last few years invalidating software patents under Alice, Amdocs and other recent Federal Circuit rulings provide examples of how software claims can pass Section 101 eligibility challenges through proper framing.  These cases also show the weight of authority may be signaling software patents are better challenged under other means such as anticipation, obviousness, and Section 112 challenges, and not Section 101.

Branding Buds – Still Illegal Under Federal Law

Posted in Patent Law, Trademark Law

Scott-Hervey-10-webIf voters in California  approve Proposition 64 which would legalize the possession and use of marijuana for recreational purposes, it is without question that the sunshine state will see a huge increase in the number of businesses within the cannabis industry. According to a November 7, 2016 Forbes article, the passage of Proposition 64 could add $8.38 billion in annual sales to an already robust medical market worth an estimated $2.83 billion.  Despite what happens at the voting polls on November 8, marijuana is still illegal under federal law and this makes branding marijuana strains,  paraphernalia or services related primarily to marijuana tricky.

One example of this is the recent problems a cannabis entrepreneur faced in seeking to register two trademarks.  JJ206, LLC sought to register the marks POWERED BY JUJU and JUJU JOINTS with the USPTO, for “smokeless cannabis vaporizing apparatus, namely, oral vaporizers for smoking purposes; vaporizing cannabis delivery device, namely, oral vaporizers for smoking purposes.” The Examining Attorney refused registration of the marks based upon lack of lawful use of the mark in commerce.

Under Section 1 of the Lanham Act (15 USC 1051),  the registration of a trademark requires use in commerce.  Section 45 of the Lanham Act (15 USC 1127) defines “commerce” as all commerce which may lawfully be regulated by Congress.  If the goods or services covered by a mark are unlawful, actual lawful use in commerce is not possible, and a refusal under Trademark Act Sections 1 and 45 will be made. But what about the situation where the goods or services are lawful under state law and illegal under federal law.

While vaporizing devices for cannabis may be legal in certain states, they are illegal under the federal Controlled Substances Act (CSA).  The CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, defined as “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].”  Where goods or services in a trademark application are identified as primarily intended or designed for use in ingesting, inhaling, or otherwise introducing cannabis or marijuana into the human body, it constitutes unlawful drug paraphernalia under the CSA.

JJ206’s argument that it only intends to do business in states which allow for the sale and distribution of marijuana was not persuasive.  The TTAB noted that whether a product or service is lawful within a state is irrelevant to the question of federal registration when it is unlawful under federal law.  Because “commerce” is defined in the Trademark Act as commerce lawfully regulated by Congress, that which is illegal under federal law cannot be lawful “commerce” under the Trademark Act.  As such, any application to federally register any goods or services that are illegal under federal law will be refused, regardless if it is legal under state law.

So what’s a California cannabis entrepreneur to do?  One could rely on common law trademark rights.  Common law rights arise from actual use of a mark in commerce and no registration is required to establish common law rights.  However, enforcement can present the challenge of establishing proof of the date of first use.  Additionally, common law trademark rights are limited to the actual geographic scope of use established through evidence.

State trademark registration would be an improvement over common law rights.  In California registration is prima facie evidence of ownership of a valid mark and the exclusive right to use the mark for the covered goods or services within California.  Granted seeking registration in California and the other states in which marijuana is legal may not be as convenient or cost effective as a single federal registration and you can’t file based on intent to use, but it is still preferred over relying on common law rights.

Another strategy would be to seek registration for an ancillary product or service that does not violate the CSA.  The application could be filed based on either use in commerce or intent to use. If the mark is registered, the owner would be entitled to argue that the subsequent use by a third party would cause likelihood of confusion and infringe its trademark rights.

Weintraub Tobin’s IP Law Blog recognized as “Top 100 Legal Blogs” By Feedspot Blog Reader

Posted in IP Law Blog Lawyers In The News

Weintraub Tobin’s Labor & Employment and Intellectual Property Blogs have both been recognized as a “Top 100 Legal Blogs Every Lawyer and Law Student Must Follow” by Feedspot Blog Reader! Feedspot takes into consideration 1,000’s of Law blogs from across the United States and Canada and uses search and social metrics to rank them. Congratulations to all our wonderful attorneys for providing fresh interesting content!


To view the full list, visit Feedspot Blog Reader at

Can You Appeal the PTAB’s Decision to Institute Review of Patent Claims on Grounds Not Raised in an IPR, PGR, or CBM Petition?

Posted in Patent Law

The America Invents Act provided several procedures for challenging the validity of patent claims, including inter partes review (“IPR”), post-grant review (“PGR”) and covered business method patent challenges (“CBM”).  An IPR, PGR, or CBM challenge begins with a petition filed by the challenging party that identifies each claim challenged and the grounds for each challenge.   Based on the petition and the patent owner’s optional preliminary response, the Patent Trial and Appeal Board (“PTAB”) determines whether to institute review of one or more of the challenged patent claims.  Under the America Invents Act, this determination whether to institute review is final and nonappealable, but the PTAB’s final decision on patentability of the claims is appealable.  Recently, decisions by the PTAB have raised questions as to where the line is between appealable and nonappealable decisions.Jo-Dale-Carothers-015_web

In its decision to institute review, the PTAB can choose to review all or some of the patent claims challenged in a petition and on all or some of the grounds of unpatentability asserted for each claim.  The statute states that those decisions are not appealable.  But, if the PTAB chooses to review claims on grounds not specifically raised in a petition, are those decisions appealable?  The Court of Appeals for the Federal Circuit has determined it lacks jurisdiction to review such cases because they are part of the determination to institute review and thus are not appealable.  Earlier this year, in Cuozzo Speed Technologies, LLC v. Lee, the U.S. Supreme Court also weighed in on this issue holding that the America Invents Act precludes appeal of decisions by the PTAB to institute review of challenged patent claims.  Arguably, however, the Court left the door open for potential exceptions, such as in cases that raise constitutional issues of due process or where the PTAB has exceeded its statutory authority.

In Cuozzo, the patent related to a speedometer that will show a driver when his or her car is exceeding the speed limit.  In 2012, Garmin filed a petition seeking inter partes review of the validity of the Cuozzo patent.  Garmin’s petition included an argument that claim 17 was invalid as obvious in light of three prior art patents, and the PTAB instituted review of claim 17.  While noting that Garmin had not expressly challenged claims 10 and 14 as obvious in light of these references, the PTAB also instituted review of those claims on the same obviousness grounds.  The PTAB explained that because claim 17 depends on claim 14 which depends on claim 10, Garmin had implicitly challenged claims 10 and 14.  Ultimately, the PTAB invalidated all three claims as obvious.

The owner of the Cuozzo patent appealed to the Federal Circuit arguing that the PTAB erred in instituting review of the two claims not expressly identified in the petition because the relevant statute requires that petitions must be pled with particularity.  But the Federal Circuit held that 35 U.S.C. §314(d) rendered the decision to institute inter partes review nonappealable.  The U.S. Supreme Court agreed holding that §314(d) precluded judicial review because it says that the “determination by the [Patent Office] whether to institute an inter partes review under this section shall be final and nonappealable.”  Further, the Court stated that the logical linking of claims 10 and 14 to claim 17 precluded the need for the petition to “repeat the same argument expressly when it is so obviously implied.”  Therefore, the Court found that the “No Appeal” provision’s language must at least forbid an appeal in such circumstances.

The Supreme Court, however, emphasized that its interpretation only  applies to appeals where “the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.”  The Court went on to explain that it was not deciding the precise effect of §314(d) on appeals that “implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach … beyond ‘this section.’”  The Court also noted that it did “not categorically preclude review of a final decision where a petition fails to give ‘sufficient notice’ such that there is a due process problem with the entire proceeding, nor does the interpretation enable the agency to act outside its statutory limits ….”

When does a petition fail to give sufficient notice thus causing a due process problem? What constitutes the PTAB acting outside its statutory limits? Those are the questions SightSound Technologies is asking the U.S. Supreme Court to address and clarify in SightSound’s recently-filed petition for a writ of certiorari.

In 2011, SightSound sued Apple for allegedly infringing three SightSound patents related to the electronic sale and distribution of digital audio and video signals.  Apple challenged claims of two of the patents in petitions for CBM review asserting that the challenged claims were anticipated under 35 U.S.C. §102 by a CompuSonics system.  Apple submitted numerous references and a declaration in support of its §102 argument.  Apple did not challenge the claims as obvious under 35 U.S.C. §103.  The PTAB, however, decided to institute review of the claims under both §102 and §103 explaining that while Apple’s petitions did not assert obviousness explicitly, the petitions nevertheless supported such a ground based on the detailed explanation of the various CompuSonics references.

SightSound objected that the PTAB lacked authority to raise a ground of unpatentability (obviousness) that Apple had never asserted.  The PTAB granted SightSound additional time for argument and authorized it to file sur-replies and new declarations on the issue of obviousness “to ensure that Patent Owner has a full and fair opportunity to be heard on the issue of obviousness.”  Ultimately, the PTAB rejected Apple’s anticipation argument but instead invalidated the challenged claims as obvious under §103.

SightSound appealed to the Federal Circuit, which held that decisions relating to the institution of CBM review are not appealable under 35 USC §324(e), which mirrors the language in §314(d) for inter partes review.  In its petition to the U.S. Supreme Court, citing Cuozzo, SightSound argues that the PTAB’s decision to institute review based on obviousness is appealable because the PTAB exceeded the its statutory authority and deprived SightSound of due process protection.

First, SightSound argues the PTAB lacked statutory authority to conduct an obviousness review because Apple did not challenge the claims as obvious in its petition.  Second, SightSound explains that because a patent is a vested property right, it confers due process protection and patent owners are entitled to “notice and an opportunity to be heard by a disinterested decisionmaker” when the validity of their patent claims is challenged.  SightSound argues that it was not provided this notice because the PTAB did not articulate the specific combinations of the twelve “CompuSonics publications” or the motivation for combining those references until the PTAB’s final written decision.  SightSound alleges this “forced [SightSound] to shoot in the dark” as to which combination of references formed the basis for the PTAB’s obviousness arguments and prejudiced its ability to locate and submit contrary evidence.  Thus, according to SightSound, it was deprived of its due process protection because it was never given sufficient notice of the specific obviousness arguments so that it could fairly defend the validity of its patent claims.

We will have to wait to see whether the Supreme Court weighs in on whether the PTAB has exceeded its authority or deprived a patent owner of due process rights in granting review of patent claims on grounds not raised in a challenger’s petition.  For now, patent owners should assume that the PTAB may take a broad interpretation of a challenger’s petition when determining the scope of review.

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Locksmith Locked Out By Communications Decency Act

Posted in Cyberspace Law, Web/Tech

The Communications Decency Act (“CDA”) provides broad immunity for “providers of interactive computer services.” In essence, if an internet service provider falls within certain parameters, it is entitled to immunity against certain claims of liability brought under state law. Last month, the Ninth Circuit again considered the breadth of such immunity in the case, Kimzey v. Yelp!.

As many readers may know, Yelp is a website that allows customers to “rate” their experience with a particular store, restaurant or service provider. The reviewing customer can also leave a detailed review in connection with their 1-5 star rating. Yelp then aggregates all customer reviews into a single rating and this information may be found not only on Yelp’s website, but also on other James Kachmar 08_websearch engine websites like Google.

The plaintiff, Douglas Kimzey, operated a locksmith shop in the Washington area. The Ninth Circuit’s opinion relates that he was subject to a one-star review by a purported customer, “Sarah K,” whose review began, “THIS WAS BY FAR THE WORST EXPERIENCE I HAVE EVER ENCOUNTERED WITH A LOCKSMITH.” It did not get much better from there.

Rather than suing the customer for posting the offending review, Kimzey sued Yelp instead. In an attempt to get around the immunity provisions set forth in the CDA, Kimzey alleged two novel theories: (1) that Yelp, by creating its review and star-rating system in effect “created the content” to subject it to liability; and (2) by allegedly “republishing” the negative review through advertisements and/or search engines, Yelp was liable as the publisher of the negative review. The District Court granted Yelp’s motion to dismiss on the ground that it was immune from such liability under the CDA.

The Ninth Circuit began by reviewing the immunity provision in the CDA, Section 230(c)(1), which provides protection from liability only to “(1) a provider or user of an interactive computer service; (2) whom a plaintiff seeks to treat under a state law cause of action as a publisher or speaker; (3) of information provided by another information content provider.” The Ninth Circuit said that it was easy to conclude that Yelp was a provider of “an interactive computer service” given that such term should be interpreted “expansively” under the CDA. In fact, the Ninth Circuit recognized that in today’s cyberworld, “the most common interactive computer services are websites,” such as Yelp. The Ninth Circuit continued by finding that it was clear that Kimzey’s claims against Yelp were “premised on Yelp’s publication of Sarah K’s statements and start rating.”

In turning to the gist of Kimzey’s complaint, the Ninth Circuit reasoned that, “a careful reading of the complaint reveals that Kimzey never specifically alleged that Yelp authorized or created the content of the statements posted under the aegis of Sarah K, but rather that Yelp adopted them from another website and transformed them into its own stylized promotions on Yelp and Google.” The Ninth Circuit found, without any difficulty, that such “threadbare allegations of fabrication of statements are implausible on their face and are insufficient to avoid immunity under the CDA.” In essence, the Ninth Circuit found that such artful pleading as that engaged in by Kimzey would allow other plaintiffs to avoid the broad immunity protections provided by the CDA.

The Ninth Circuit reasoned that Congress in enabling immunity from liability wanted to protect the purpose of the internet which was to further the “free exchange of information and ideas.” Further, allowing a plaintiff to plead around the immunity statute would eviscerate Congress’ purpose in furthering this purpose.

Turning to the next part of Kimzey’s complaint, the Ninth Circuit noted that Kimzey alleged that Yelp designed and created the signature star-rating system and thereby served as the “author” of the one-star rating given by Sarah K. He also alleged that Yelp had “republished” the allegedly offending statements on Google by way of advertisements. The Ninth Circuit recognized that there was no immunity under the CDA if the service provider “created” or “developed” the offending materials. However, the service provider had to make “a material contribution to the creation of development of content” in order to lose immunity under the CDA.

The Ninth Circuit concluded that neither prong was satisfied by Kimzey. The court ruled that “the rating system does absolutely nothing to enhance the defamatory sting of the message beyond the words offered by the user.” Further, the Ninth Circuit had previously found in Carafano v., Inc., 339 F.3d 1119 (9th Cir. 2003), that the mere collection of responses to a particular question “does not transform [the service provider] into a developer of the underlying misinformation.” Likewise, a California appellate court had previously rejected a claim based on eBay’s rating system and found that the system was “simply a representation of the amount of such positive information received by other users of eBay’s website.” Gentry v. eBay, Inc., 121 Cal. Rptr.2d 703 (2002).

The Ninth Circuit, in relying on this precedence, reasoned that it was difficult “to see how Yelp’s rating system, which is based on rating inputs from third parties in which reduces this information into a single aggregate metric, is anything other than user generated data.” Furthermore, the Ninth Circuit rejected Kimzey’s argument that Yelp’s use of the user-generated information in advertisements subjected it to liability as a “republisher.” The Ninth Circuit concluded that there was “[n]othing in the text of the CDA [that] indicated that immunity turns on how many times an interactive computer service publishes `information provided by another information content provider.’” The Ninth Circuit ruled that “just as Yelp is immune from liability under the CDA for posting user generated content on its own website, Yelp is not liable for disseminating the same content in essentially the same format to a search engine as this action does not change the origin of the third party content.” The Ninth Circuit affirmed the lower court’s dismissal of Kimzey’s complaint against Yelp.

The Kimzey case is a reminder of the broad protections provided to interactive computer service providers under the CDA when faced with state law lawsuits regarding the publication of information provided by a user. Defendants in such cases should explore the possibility of immunity under the CDA in order to cut short such lawsuits by having them dismissed early, often prior to the expense of discovery.

James Kachmar is a shareholder in Weintraub Tobin Chediak Coleman Grodin’s litigation section. He represents corporate and individual clients in both state and federal courts in various business litigation matters, including trade secret misappropriation, unfair business competition, stockholder disputes, and intellectual property disputes. For additional information about James and his practice, visit his attorney bio at

Website Listing of Tequila Client Work Gets PR Firm a Trademark Shot

Posted in Copyright Law, Patent Law, Trademark Law

Can the owner of renowned tequila brand Patrón prevent a former marketing and PR firm from listing it as a client on its website and discussing the services it provided?  Patrón believes it can and has sued its former marketing firm, The Reindeer Group, for trademark infringement in Federal court in Texas.

In 2009 Patrón engaged Reindeer to provide advertising agency services.  Patrón claims that under the terms of Reindeer’s engagement, Reindeer agreed that it would not display any work regarding the Patrón brands, nor display the Patrón marks, without Patrón’s prior written approval.  Reindeer’s engagement ended in December, 2011.

Patrón claims that despite the termination of its services, Reindeer was using the Patrón marks on its website and was claiming that Patrón was a current client.Scott Hervey Article

Patrón claims that Reindeer failed to respond to letters from its counsel requesting that it cease the unauthorized use of the Patrón marks, thus necessitating the filing of a complaint.

In reading the complaint, it appears that this dispute is more about Reindeer’s billings than its use of the Patrón marks.  That said, Patrón makes a claim which, if upheld by the court, could impact how advertising agencies and other service professionals reference work performed for clients for marketing purposes.  Most advertising agencies get advance permission – usually within a written service agreement – to display the work as part of the firm’s portfolio.  Some firms, however, do not seek a client’s approval.  The outcome of Patrón’s claim could bring an end to that practice.

In its complaint for trademark infringement, Patrón claims that Reindeer’s listing of it on the Reindeer website and using the Patrón marks to refer to the work performed for Patrón as having

……harmed and continues to harm Patrón.  Such use deprives Patrón of the right to control its intellectual property, and to exclude unauthorized users — the core right of such property.  Moreover, Reindeer’s use of Patrón’s marks falsely suggests a connection between the two brands, which allows Reindeer to reap the benefits of the highly valuable Patrón name and all of the associated goodwill, but without Patrón’s permission.  This unauthorized use of Patrón’s marks diminishes the exclusivity of the marks, and threatens the marks’ source-identifying significance, and this damage is exceedingly difficult to quantify in monetary terms.

The Lanham Act provides that the holder of a registered trademark can file a trademark infringement claim against any person who, without the registered trademark holder’s consent, uses any reproduction, counterfeit, copy, or colorable imitation of a registered mark, in commerce, in connection with the sale, offering for sale, distribution, or advertising of any goods or services, where such use is likely to cause confusion, or to cause mistake, or to deceive.  Pursuant to 15 U.S.C. § 1125(a), “Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . .  is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . . shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act.”

Patrón claims that Reindeer’s conduct  “has caused and is likely to continue to cause purchasers or others to mistakenly believe that Reindeer is legitimately connected, affiliated or associated with Patrón, or that Patrón approves Reindeer’s services, which is not the case.  Consumers who encounter Reindeer’s website are likely to incorrectly believe that Reindeer currently is the exclusive provider of advertising services for Patrón.” So seemingly, Patrón has a strong claim against Reindeer…but maybe not.

Trademark law recognizes a defense where the mark is used only “to describe the goods or services of [a] party, or their geographic origin.” Courts have found that nominative trademark fair use exists where the defendant used the plaintiff’s mark simply to describe the plaintiff’s own product.  In the case of nominative trademark fair use, the original producer is deemed as a matter of law not to sponsor or endorse the third-party product or service that uses its mark in a descriptive manner.  The test for nominative trademark fair use requires the court to ask whether (1) the product was “readily identifiable” without use of the mark; (2) defendant used more of the mark than necessary; or (3) defendant falsely suggested he was sponsored or endorsed by the trademark holder.

In Volkswagenwerk Aktiengesellschaft v. Church, 411 F.2d 350, 352 (9th Cir., 1969), the Ninth Circuit applied nominative trademark fair use and found that in “advertising [the repair of Volkswagens, it] would be difficult, if not impossible, for [Church] to avoid altogether the use of the word ‘Volkswagen’ or its abbreviation ‘VW,’ which are the normal terms which, to the public at large, signify appellant’s cars.”   Church did not suggest to customers that he was part of the Volkswagen organization or that his repair shop was sponsored or authorized by VW; he merely used the words “Volkswagen” and “VW” to convey information about the types of cars he repaired.  Therefore, his use of the Volkswagen trademark was not an infringing use.

In applying nominative trademark fair use to Reindeer’s use of the Patrón marks, a court would ask whether (1) Reindeer could describe the work it performed for Patrón without using the Patrón marks; (2) in describing the past work it performed for Patrón, did Reindeer use more of the Patrón marks than necessary to convey the information; or (3) whether Reindeer’s use of the Patrón marks in describing the services it provided for Patrón falsely suggested it was sponsored or endorsed by Patrón.  In a general sense, it would be difficult, if not impossible for Reindeer, or any other service provider who provides services to Patrón, to describe the services without using the Patrón marks.  Assuming Reindeer can get past the claim that it was contractually prohibited from using the Patrón marks without Patrón’s approval, Reindeer might have a good shot at putting Patrón’s trademark claim back in the bottle.

Federal Circuit Rules the Patent Trial and Appeal Board Can Consider New Evidence During AIA Review Trial

Posted in Copyright Law, Legal Info, Patent Law, Trademark Law

On September 26, 2016, the U.S. Court of Appeals for the Federal Circuit declined to review in a unanimous en banc decision a panel Federal Circuit decision affirming that the Patent Trial and Appeal Board (the “Board”) at the Patent and Trademark Office (“USPTO”) could hear new evidence during a trial, evidence that was not cited by the Board in its decision to institute review under the America Invents Act (“AIA”).  In so doing, the Federal Circuit reasoned “[t]he introduction of new evidence in the course of the trial is to be expected in inter partes review trial proceedings and, as long as the opposing party is given notice of the evidence and an opportunity to respond to it, the introduction of such evidence is perfectly permissible.”01-Caliguri-Er-15EX-web

The patents at issue in the case are U.S. Patent Nos. 7,351,410 (“the ’410 patent”) and 7,655,226 (“the ’226 patent”), both entitled “Treatment of Pompe’s Disease,” and are directed to treating Pompe’s disease with injections of human acid α-glucosidase.  Pompe’s disease is a genetic disease caused by a complete or partial lack of the lysosomal enzyme acid α-glucosidase (“GAA”).  In a healthy individual, GAA breaks down glycogen, a larger molecule, into glucose.  A person with Pompe’s disease has reduced levels of GAA, or no GAA at all, and is unable to break down glycogen into glucose.  This inability results in glycogen accumulating in the muscles of affected patients in excessive amounts.  There are two forms of Pompe’s disease: early-onset and late onset.  Early onset occurs in infants shortly after birth and is usually fatal before one year because excess glycogen accumulates in the muscles and causes cardiac or respiratory failure.  Those with late onset develop the disease after infancy and have progressive muscle weakness and respiratory issues caused by the glycogen buildup in the muscles, but do not typically develop the severe cardiac symptoms associated with early onset.

In 2013, Biomarin, the petitioner, filed petitions requesting inter partes review of the ’410 and ’226 patents.  The Board granted review on two different obviousness grounds for each challenged claim in each patent.  In its final written decisions, the Board found by a preponderance of the evidence that the challenged claims of the ’410 and ’226 patents would have been obvious.  In so doing, he Board cited references in its final written decisions that were not specifically included in the combinations of prior art on which the Board instituted review.

On appeal, Genzyme, the patent owner, argued that the Board violated the requirements of notice and an opportunity to respond found in the Administrative Procedure Act (“APA”).  Genzyme argued that in finding that the claims at issue were unpatentable, the Board relied on “facts and legal arguments” that were not set forth in the institution decisions.  Therefore, according to Genzyme, it was denied notice “of the issues to be considered by the Board and an opportunity to address the facts and legal arguments on which the Board’s patentability determination [would] rest.”

The Federal Circuit rejected this argument because the Board’s decision to institute review does not need to refer to every bit of evidence that is relied on by the Board in its final written decision.  The Federal Circuit reasoned “there is no requirement, either in the Board’s regulations, in the APA, or as a matter of due process, for the institution decision to anticipate and set forth every legal or factual issue that might arise in the course of the trial.”

Moreover, the Federal Circuit found “Genzyme has not shown that the Board’s decisions rested on any factual or legal issues as to which Genzyme was denied notice or an opportunity to be heard at a meaningful point in the proceedings.”  Indeed, the Federal Circuit noted that Genzyme itself referred to the disputed prior art in its patent owner responses to the petitions.  Therefore, the Federal Circuit found “Genzyme had ample notice that the references were in play as potentially relevant evidence and that the Board might well address the parties’ arguments regarding those references in its final written decisions.”  The Federal Circuit also noted that despite having notice of the prior art, Genzyme failed to take advantage of its procedural options to seek to exclude that evidence or further respond before the Board.

Finally, the Federal Circuit also noted the relatively limited use to which the Board put the disputed references.  Specifically, the Board used the references merely to describe the state of the art; and they were not among the prior art references that the Board relied upon to establish any claim limitations.  Thus, the Federal Circuit reasoned it has previously “made clear that the Board may consider a prior art reference to show the state of the art at the time of the invention, regardless of whether that reference was cited in the Board’s institution decision.”

This case serves as a warning to both petitioners and patent owners alike when faced with patent review under the AIA.  For patent owners, do not expect to able to exclude evidence or arguments raised at trial after the fact simply because the exact contours of the evidence or arguments were not raised in the petitions or the Board decision to institute review.  Instead, take advantage of all pro-active measures along the way, such as motions to exclude, motions seeking additional briefing, and so on.  For petitioners, be careful relying too heavily on evidence or arguments not raised in the petitions or cited in the Board’s decision to institute review.  Although successful here, one could argue the results may be different if patent owner had no notice of the references, did not have any opportunity to previously object, or the references had a significant substantive role in the Board’s decision, such as to establish claim limitations.