Quick answer: no!

The Federal Circuit Court of Appeals recently tangled with a patent application for an invention that did not have scientific support.  The court affirmed a decision of the Patent Trial and Appeal Board rejecting a patent application on these grounds.  While this is not a common occurrence, in this case, it’s an easy conclusion to reach.

In In re Huping Hu, 2021 U.S. App. LEXIS 7776, the inventors applied for patents for inventions related to “quantum entanglement.”  According to the inventors, quantum entanglement is “quantum spins of photons, electrons and nuclei.”  The inventors explained that “quantum spins of photons, electrons and nuclei have now been successfully entangled in various ways for purposes of quantum computation and communication.”  The inventors said that quantum entanglement is a phenomenon that happens if particles, such as photons and electrons, become linked, and, when separated, the mechanical states of the molecules are still linked such that if the state of one particle is changed, the linked particle is affected.  The PTO explained the inventors’ method as using quantum entanglement “to change the characteristics of one substance via the manipulation of a completely physically separate substance.”  The PTO did not dispute the existence of quantum entanglement, but said that the phenomenon has been seen in very specific conditions for only a fraction of a second. Continue Reading Can a Patent Violate the Laws of Chemistry and Physics?

In Hytera Communications Corp. Ltd. v. Motorola Solutions, Inc., 1-17-cv-01794 (NDOH 2021-04-29, Order) (Donald C. Nugent), the District Court denied defendant’s motion for attorney fees under 35 U.S.C. § 285, determining plaintiff’s litigation positions were not baseless even after a granting of summary judgment of noninfringement that “was not a close call.”  

As way of background, in patent infringement cases, Courts are authorized to award “reasonable attorney fees to the prevailing party” in “exceptional cases.” The determination of whether to award fees requires a two-step process: first, the court must make a factual determination as to whether the case is “exceptional,” and second the court must exercise its discretion to determine if an award of attorney fees is warranted.  Under the Federal Circuit’s holding in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), a case is exceptional if under the totality of the circumstances “it stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” 

However, a defendant need not show that the litigation is both objectively baseless and brought in bad faith.  Rather, a case may be deemed “exceptional” if it presents “either subjective bad faith or exceptionally meritless claims.”  A finding of subjective bad faith may be supported solely by circumstantial evidence, without inquiry into the plaintiff’s state of mind.  Moreover, a case may also be designated “exceptional” when a suit originally brought in good faith is prolonged or extended after it becomes clear that it can no longer be pursued in good faith.  However, the party seeking attorney’s fees under bears the burden of showing that the case is exceptional by a preponderance of the evidence.

Turning to the case at issue, defendant Motorola first claimed that plaintiff Hytera brought the action solely as a way of retaliating against it for Motorola pursuing trade-secret and infringement claims against Hytera in multiple other jurisdictions.  However, the court reasoned that “although circumstantial evidence of bad faith can be sufficient to support an exceptional finding for purposes of attorney fees, the allegation that Hytera’s infringement claims in this case were improperly motivated from the outset remains speculative and is unsupported even by circumstantial evidence.” Further, the court also found that there is no evidence of bad faith delays or obfuscation by Hytera during the litigation process.

Next, Motorola contended that Hytera knew that its case was baseless from the beginning because it was aware that the Motorola products did not meet all of the required claim limitations.  And regardless, even if Hytera did not know it at the time it brought the case, Motorola also claimed that Hytera failed in its duty by continuing to rely solely on theories that were unsupportable under the claim construction that was adopted by the Court.

However, the court rejected these contentions by Motorola, reasoning it was not wholly unreasonable for Hytera to investigate and attempt to develop other infringement theories following claim construction.  In short, the court found that although its “decision on Summary Judgment was not a close call. The patent language, and the Court’s construction of claim terms clearly support the finding in favor of Motorola. Hytera’s arguments were somewhat strained and often separated from the context and a common sense interpretation of the patent language. However, they were not entirely baseless or frivolous. A case is not extraordinary simply because the Plaintiff was ultimately unsuccessful, even if its lack of success was entirely predictable. In this case. Motorola did not meet its burden of proving by a preponderance of the evidence that this case was exceptional under 35 U.S.C. §285.”

Therefore, the court found that Motorola failed to shown, by a preponderance of the evidence, that the case was “exceptional” within the meaning of 35 U.S.C. § 285 and denied Motorola’s request for the imposition of its attorney fees.  Thus, this case shows that even when a decision on summary judgment was not a close call by the court, this still does not mean the case is necessarily “exceptional” within the meaning of the Patent Statute such that a defendant can just expect its attorney’s fees to be awarded.  Instead, the defendant still must show by a preponderance of the evidence why the case was exceptional and that it is entitled to its attorney’s fees.

If you pay much attention to sneakers, you might know that the agreement between Nike and the Bryant Estate for Nike’s line of Kobe sneakers recently expired. Although Kobe started his career with Adidas, he changed to Nike in 2003, and he stayed there for the rest of his life. Many people expected the estate to reach a deal with Nike to continue the partnership, but the deal has officially expired without any sort of agreement being reached. Some people speculated that the Bryant Estate may have been allowing the agreement to get closer to expiring to leverage Nike into a more favorable deal. But a statement released by Vanessa Bryant indicated that the dealbreaker may have been Nike’s unwillingness to enter into an agreement for perpetuity. Of course, we may never know, but what we do know is that the deal has expired. So what now?

Well, if the uptick in activity at the Trademark Office is any indication of what’s to come, we may see the late Mamba’s estate launch its own brand. On or around March 23, 2021, Kobe Bryant, LLC filed applications for numerous trademarks related to logos or terms associated with Kobe and his family. The marks include: Play Gigi’s Way, Mamba and Mambacita, Baby Mambas, the Mamba logo, Mambacita, Lady Mambas, Mamba, Kobe Bryant, and more. These applications were filed in connection with clothing, headwear, and footwear. So, if one were speculating, you might assume that Kobe Bryant, LLC is looking to launch its own brand of apparel. Of course, you could also speculate that the Bryant Estate is simply protecting its rights in these marks and that it will later license the rights to another company like Nike or Adidas. My bet is on the former.

Nike drew significant criticism over time for releasing small batches of Kobe’s apparel, resulting in many fans being excluded from ownership or having to pay exorbitant amounts to buy the apparel from verified resellers like StockX. This problem isn’t exclusive to Kobe apparel. It happens with Jordan apparel and other apparel sold by Nike. I have yet to be able to purchase a pair of shoes through one of Nike’s “drawings” and have been relegated to StockX on numerous occasions. It’s quite frustrating. And it seems Vanessa Bryant recognized this issue, as she also mentioned in her statement that the goal is to ensure that Kobe’s fans are able to obtain and wear his products. She said she will continue to “fight for that.” It seems that she could resolve that issue if Kobe Bryant, LLC launches its own brand, and I believe that’s exactly what Vanessa Bryant plans for it to do.

We will keep an eye on this developing issue and report back. It’s always interesting what you can learn from activity at the USPTO. Stay tuned.

In the 9th Circuit (as well as the 2nd, 5th, 6th, and 11th Circuits), the test for determining whether the use of a third-party trademark in an expressive work (i.e., use of a brand within a movie, TV series, video game, etc., including as part of the title of an expressive work) is the 2nd Circuit’s test from the 1989 case of Rogers v. Grimaldi. The Rogers test was adopted by the 9th Circuit in Mattel, Inc. v. MCA Records (better known as the “Barbie Girl” case). Under the Rogers test, the use of a third-party mark in an expressive work does not violate the Lanham Act “unless the title has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless the title explicitly misleads as to the source or the content of the work.” As is evident, this is very different from the multifactor test adopted in AMF Inc. v. Sleekcraft Boats – (1) strength of the protected mark; (2) proximity and relatedness of the goods; (3) type of goods and the degree of consumer care; (4) similarity of the protected mark and the allegedly infringing mark; (5) marketing channel convergence; (6) evidence of actual consumer confusion; (7) defendant’s intent in selecting the allegedly infringing mark; and (8) likelihood of product expansion.” The reason for the differing treatment of expressive works is twofold: (1) they implicate the First Amendment right of free speech, which must be balanced against the public interest in avoiding consumer confusion; and (2) consumers are less likely to mistake the use of someone else’s mark in an expressive work for a sign of association, authorship, or endorsement.

Under the Rogers test, the first inquiry is whether the use of the third-party mark has “some artistic relevance”. The threshold for this test is extremely low; basically, if the level of artistic relevance is more than zero, this is satisfactory. If there is greater than zero artistic relevance in the use of the third-party mark, the next analysis is whether the use of the third-party mark explicitly misleads as to the source or content of the work. Although in most instances an “explicitly misleading use” requires an overt claim or an explicit reference to an association with the third-party mark. However, in Gordon v. Drape Creative, Inc., the 9th Circuit said that “the use of a mark alone may explicitly mislead consumers about a product’s source if consumers would ordinarily identify the source by the mark itself.”

Last year a federal district court in Colorado (which is in the 10th Circuit) addressed a Rogers type claim which was a question of first instance for that court and the 10th Circuit. The case involved titles of nature documentary series; one producer claimed that the title of a National Geographic nature documentary series infringed the trademark rights in the title of the producer’s prior series. The court declined to follow Rogers and adopted a new test.

In the 80s and 90s Marty Stouffer Productions produced a nature documentary series entitled Wild America that was televised on PBS. Today, episodes of Stouffer’s Wild America are broadcast on television, can be purchased on DVD and are accessible through a variety of streaming services. National Geographic is a producer of documentary programming on its Nat Geo TV and Nat Geo WILD stations. National Geographic had explored with Stouffer the possibility of licensing or purchasing Stouffer’s Wild America film library, but no deal was reached. In 2010, Stouffer declined Nat Geo’s request to use the titles Wild Americas or Wildest Americas for a natural history miniseries, advising that those titles were too close to Stouffer’s registered “Wild America” trademark. In 2012, National Geographic aired a series with the title Untamed Americas in the U.S. and the title Wild America outside of the US. National Geographic subsequently released nature-themed programs in the U.S. under the titles America the Wild, Surviving Wild America and America’s Wild Frontier. Stouffer then sued Nat Geo for trademark infringement and other claims.

This being a case of first impression for this particular circuit court and the 10th Circuit, the court, in ruling on NatGeo’s motion to dismiss, considered the purpose of the Rogers test – a means of limiting the application of the Lanham Act to protect First Amendment interests. While agreeing with the principal of the Rogers test, the court found faults with it and elected instead to create its own new test.

Displeased with the Rogers test, the Colorado district court adopted its own six non-exclusive factors to consider. Those factors are: (i) Do the senior and junior users use the mark to identify the same kind, or a similar kind, of goods or services; (ii) to what extent has the junior user “added his or her own expressive content to the work beyond the mark itself”; (iii) does the timing of the junior user’s use in any way suggest a motive to capitalize on popularity of the senior user’s mark; (iv) in what way is the mark artistically related to the underlying work, service, or product; (v) has the junior user made any statement to the public, or engaged in any conduct known to the public, that suggests a non-artistic motive; and (vi) has the junior user made any statement in private, or engaged in any conduct in private, that suggests a non-artistic motive?

And while the district court ultimately found for Nat Geo (as it would have under a strict application of the Rogers test), the interesting inquiry is why this court felt Rogers was insufficient. It seems that a significant factor in the court’s reasoning was the 9th Circuit’s holding in Gordon v. Drape Creative.

Gordon involved a trademark dispute between the owner of famous YouTube videos featuring a honey badger who coined the phrase “Honey Badger Don’t Care” and subsequently registered trademarks for various goods including greeting cards, and Drape Creative who produced a greeting card using variations of Honey Badger Don’t Care. The 9th Circuit, applying Rogers, found that the artistic relevance of Drape’s use of Honey Badger Don’t Care met the threshold of being more than zero, but ended up sending the case back to the district court in order to determine whether Drape’s use was “explicitly misleading.”

With the threshold of artistic relevance being so low and the requirement of an explicit or overt claim to meet the requirement of “explicitly misleading use”, the court concluded that “trademarks registered for arguably artistic products and services are not worth the paper that the trademark registration is printed upon.” Anyone can use a trademark, the court continued, “even to sell the same goods or service for which the trademark was granted, if the goods or service can be deemed ‘art’.” The court said that the Rogers test, taken at face value can destroy the value of a trademark if the alleged infringer is willing to be sued and defend themselves under the Rogers test.

It seems that the problem with Rogers, at least according to this district court, is the extremely low threshold of artistic relevance. In a case of this nature, the court stated that the First Amendment should place a “thumb on the scale of expressive use” and not “a fist”. This court’s “Genuine Artistic Motive” test allows the court to probe the motive for the adoption of the allegedly infringing use and include those facts in its analysis. And while Rogers remains the test adopted by a number of Circuits, it certainly would be interesting if this case were appealed to the 10th Circuit.

Pfizer and BioNTech recently asked the Southern District of California to dismiss a patent infringement claim from Allele Biotechnology related to Pfizer and BioNTech’s Covid-19 vaccine.

Allele holds a patent for a fluorescent protein called mNeonGreen, which causes some cells to glow when exposed to certain kinds of light.  Allele does not claim that mNeonGreen is used in the vaccine or was used by Pfizer and BioNTech to develop the vaccine, but rather that mNeonGreen is used in one of the clinical tests to detect the presence of antibodies in a patient that was given the Covid-19 vaccine.  A third party created a pseudo Covid-19 virus containing mNeonGreen, which then introduced to a sample of a patient’s blood cells.  If the patient has no antibodies to Covid-19, the pseudo virus will infect the blood cells and the cells will fluoresce, allowing the detection of the virus.  No fluorescence means that the cells were not infected with the virus, and that the patient therefore has antibodies to Covid-19.

Allele claims that mNeonGreen was used repeatedly throughout Pfizer and BioNTech’s vaccine trials and was referenced multiple times in their Emergency Use Application to the FDA.  At the same time, Allele filed suit against Regeneron, the maker of an experimental antibody cocktail found to be successful in treating Covid-19 (and was famously given to President Trump just days before Allele filed suit against Regeneron).  Allele claims that its product was infringed by both the antibody cocktail and the vaccine.

Pfizer and BioNTech argue that they fall within the safe harbor in 35 U.S.C. 271(e)(1), which allows the use of patented inventions for “uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs….”  Citing Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661, 671 (1990), Pfizer and BioNTech claim that they are permitted to “engage in otherwise infringing activities necessary to obtain regulatory approval,” including under their Emergency Use Application to the FDA.  Because Pfizer and BioNTech used mNeonGreen only in the context of clinical trials to asses the presence of Covid-19 antibodies, Pfizer and BioNTech argue that they fall within the safe harbor provision of the statute.

The hearing on Pfizer and BioNTech’s motion to dismiss is set for May 3.  Given the high stakes of the Covid-19 testing and vaccine market, it will certainly be closely watched.