Patents protect inventions.  However, patents protect only certain inventions.  In order to be patentable, an invention must fall within one of four categories of patent-eligible subject matter: articles of manufacture, machines, processes, and compositions of matter. 35 U.S.C. §101.  There are some things that are not patentable (i.e. are patent-ineligible subject matter): laws of nature, natural phenomena, and abstract ideas.

In 2014, in Alice Corp. Pty. Ltd. v. CLS Bank International, 573 U.S. 208, 216, 219 (2014), the Supreme Court established a two-part test to determine whether an invention is patent-eligible.  In the first step, a determination is made as to whether the claimed invention falls within one of the categories of patent-ineligible subject matter.  If it does, the second step is performed:  a determination of whether the claimed invention has an inventive concept that transforms the patent-ineligible subject matter into something patentable.


Continue Reading Once Again, Generic Computer Systems That Do Routine Functions are Not Patentable!

What happens when a junior trademark holder’s business becomes so popular and well known that it threatens to swamp the reputation of a senior mark holder?  The senior mark holder brings a trademark infringement case alleging “reverse confusion” among its potential customers.  This was the scenario the Ninth Circuit faced in its recent decision in: Ironhawk Technologies, Inc. v. Dropbox, Inc. (decided April 20, 2021).

Ironhawk develops computer software that uses compression technology to allow for the efficient transfer of data, especially in “bandwidth-challenged environments.”  It has marketed its software under the name “SmartSync” since 2004 and obtained a trademark for SmartSync in 2007.  It sells its software primarily to the United States Navy but, in 2013, sold its software to at least one major pharmacy chain.

Dropbox (as most lawyers know) produces cloud storage software that millions of users utilize around the world.  One of Dropbox’s software features, “Smart Sync,” allows a user to see and access files in their Dropbox cloud account without using up any of the user’s hard drive storage. Dropbox launched its Smart Sync feature in 2017 and was previously aware of Ironhawk’s SmartSync mark.  Ironhawk sued Dropbox for violations of the Lanham Act, i.e., trademark infringement, and unfair competition claiming that Dropbox’s use of the name “Smart Sync” intentionally infringed upon Ironhawk’s “SmartSync” trademark.

After some discovery, Dropbox moved for summary judgment.  After applying the Sleekcraft factors [from AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348-349 (9th Cir. 1979)], the district court granted summary judgment to Dropbox.  The Court found that “the overwhelming balance of the Sleekcraft factors weighs against a likelihood of confusion” and that no reasonable jury would find any confusion. Ironhawk appealed to the Ninth Circuit from summary judgment.
Continue Reading The Sleekcraft Factors and “Reverse Confusion” Trademark Infringement