Category Archives for "Patent and Trademark Law"

A LESSON FROM IKEA—USE YOUR TRADEMARK OR LOSE IT!

We all know Ikea. It is a Swedish based retailer of sleek modern designed Scandinavian style furniture, accessories, storage options, lighting, decor products, kitchen appliance and more. Ikea registered its trademark in Indonesia in 2010.

But Ikea received a big surprise when it opened its first store in Indonesia (in late 2014) when it discovered that it was not the only Ikea in town.
Indonesian rattan furniture company PT Ratania Khatulistiwa registered its Ikea trademark in December 2013. It’s an acronym of Intan Khatulistiwa Esa Abadi, which refers to the rattan industry.

TWO IKEA’s IN TOWN—WHICH ONE HAS THE RIGHTS TO THE NAME IKEA?

The Indonesian firm (Intan Khatulistiwa Esa Abadi) brought its case to the central Jakarta district court in mid-2014, when Ikea was building its first store in Indonesia. The district court ruled (in September 2014) that the trademark was owned by Ratania and ordered Ikea to stop using its own name.

The new Ikea was able to demonstrate to the court that Ikea (the Swedish retailer), had not actively used its mark in Indonesia for commercial purposes for three consecutive years.

This case went all the way to Indonesia’s Supreme Court.

THE DECISION OF INDONESIA’S SUPREME COURT

In 2015, Indonesia’s Supreme Court confirmed that Ikea (the Swedish retailer) marks were, in fact, subject to cancellation due to non-use and that PT Ratania Khatulistiwa’s registration for the mark was valid.

It is noteworthy that a Supreme Court spokesman said that the ruling was not unanimous. One of the three judges on the panel argued that the trademark law could not be applied to a company the size of Ikea, which is much bigger than the plaintiff, Ratania.

NON- USE OF A REGISTERED TRADEMARK LEAVES THE MARK VULNERABLE TO CANCELLATION

The legal framework surrounding this issue varies across the world. In the US, non-use of a mark for three consecutive years establishes a rebuttable presumption of abandonment of the mark (even if the mark is registered). . In some European countries, the period of non-use is five years. In other countries, for example, Australia, Japan, South Korea, Canada, China, and Russia, trademark registrations are vulnerable to cancellation after only three years of consecutive non-use. These time thresholds can be applied regardless of any future intent (of the holder of the mark) to use its mark.

In the US a trademark holder is allowed to make a showing that there is a special circumstance surrounding non-use of a mark under TMEP 1604.11 to rebut the presumption of abandonment. There are several excusable reasons for non-use, including the mark holder engaging in ongoing negotiations with distributors, the sale of a business, a trade embargo, or other circumstances beyond the owner’s control. Additionally, a mark holder can submit documents and testimony in
Generally an action, by a third-party petitioner is required to cancel a mark (criteria for cancellation based on non-use vary considerably by country).

Given the fact that, in most countries, the grounds for abandonment do not take into account the trademark owner’s intent as to the future use of the mark, it is imperative for a mark owner to ensure that its mark is used in each country wherein it has (or in the future plans to have) a commercial presence.

IKEA, the Swedish retailer, is reported to be still operating its Jakarta store under its IKEA mark. It will be interesting to see what its next steps will be to further its expansions plans in Indonesia.

THE FEDERAL CIRCUIT CONFIRMS LIMITED PATENT AGENT PRIVILEGE

In March, 2016, the Federal Circuit addressed the issue of whether a district court could compel the production of communications by and between Queen’s University and its non attorney patent agents.

Petitioners Queen’s University at Kingston and PARTEQ (together, “Queen’s University” or “Queen’s”) engaged in a patent infringement action against Samsung Electronics Co., Ltd. and Samsung Electronics America, Inc. (together “Samsung”) in the United States District Court for the Eastern District of Texas. Queen’s sought a writ of mandamus directing the district court to withdraw its order compelling the production of Queen’s University’s communications with its non attorney patent agents on grounds that the communications are privileged The court granted Queen’s petition.

Queen’s alleged that Samsung’s SmartPause feature infringed the patents-in-suit. Throughout discovery, Queen’s University refused to produce certain documents it believed contained privileged information, specifically asserting a privilege relating to communications with its patent agents. The court noted that, “we [the court], like the parties, refer to this as a “patent agent privilege”. Samsung moved to compel production of these documents, which included communications between Queen’s University employees and its registered non-lawyer patent agents.

Queen’s filed an objection, which the district court overruled. The district court declined to certify the issue for interlocutory appeal, but agreed to stay the production of the documents at issue pending a petition for writ of mandamus. Queen’s petition followed.

Samsung filed a request for inter partes review (“IPR”) on the patents-in-suit, and USPTO instituted same. The district court stayed the proceedings pending a ruling from the Patent Office. Samsung then unsuccessfully argued that the stay and the existence of the IPRs constitute changed circumstances that warrant denial of the petition for writ of mandamus, regardless of the merits.

The court found “that the unique roles of patent agents, the congressional recognition of their authority to act, the Supreme Court’s characterization of their activities as the practice of law , and the current realities of patent litigation counsel [are] in favor of recognizing an independent patent-agent privilege”.

REYNA, Circuit Judge, dissenting

Circuit Judge Reyna’s dissent included, but was not limited to, presenting his disagreement “that this court should create a new agent-client privilege” and, his position that “Congress recognized that agents would not have the same privileges as attorneys, and no appellate court or legislature has created an agent-client privilege. An attorney-client –like privilege should not apply merely because someone is enabled to practice limited law before a single specific administrative agency”. (Emphasis added)

Judge Reyna’s dissent included substantive case cites and sound legal positions in support of his dissent. Judge Reyna was correct in his opinion that “Congress recognized that agents would not have the same privileges as attorneys”. However, the Queen’s case did not argue that its patent agents possessed (or should possess) the same privileges as attorneys. Instead Queen’s isolated its arguments to the matter of whether its non-attorney patent agents enjoy a privilege in their capacity as Queen’s patent agents’ before the USPTO.

The Queen’s case can be found at http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/15-145.Opinion.3-3-2016.1.PDF

3D PRINTERS DUPLICATE PATENTED INVENTIONS — WHAT COULD GO WRONG?

3D printers are one of greatest innovations of all time. However, these printers are wrecking havoc on patent holders and it can only get worse.

How a 3D printer works: Download a computer-aided design (CAD) computer digital file and you have the mechanism that instructs a 3D printer to make a physical, three-dimensional object. And, being digital, the file can be shared across on the internet, including on file-sharing services. In short, you can print a 3D [actual] physical object anywhere, including at home.

Scan (or create on your computer) an object and you have the essential elements (“blueprint”) to create a 3D object—just push a button and create the object. But what if the object you created is covered by a patent? Then, you have just engaged in patent infringement.

Patents are documents issued by the federal government that grant the patent owner the right to keep others from making, using, selling or importing the patented invention. 3D printers are used in business and homes across the globe; which makes it extremely difficult, if not impossible, for the patent owner to even be aware that a person or entity is using a 3D printer to recreate [make] the invention that is patented.

Since the Patent Act allows a patent holder to bring suit against a party that facilitates an infringement, your options may include going after the sellers of the 3D printer (that created the infringed object) or a person or entity that provides and/or sells the CAD files. Of course, this is assuming that you are able to locate the infringer.

To infringe on a patent, a tangible version of the patented invention must be made. Under current 3D technology an object can only be created using a CAD file (feeding information into the 3D printer). Perhaps under these facts, an argument could be made that actual CAD files rise to the level of a “digital patent infringement”. Consequently, a person or entity that sells these CAD files could be found to have engaged in digital patent infringement”.

IS IT LIKELY THAT CONGRESS OR THE COURTS WILL ADDRESS THIS ISSUE?

Currently, there is no push for congress or the courts to address this type of patent infringement. It is likely that this issue will not be addressed until a major case is brought by a patent holder against an infringer; thereby bringing this issue out of the shadows and into the forefront of congress and the courts.

Without any repercussions (created by congress or the courts) to the infringer, the advent of the 3D printer will continue to undermine the rights of patent holders.
There will always be persons and entities who seek to profit from the hard work of others. Specifically, those who have invested time, effort and money to develop an invention and receive a patent. We saw this battle over copyrights and digital music. If the courts or congress do not take action soon—the protection otherwise provided to patent holders will be severely diminished.

THE CAFC REJECTS DISTRICT COURT’S CLAIM CONSTRUCTION IN DESIGN PATENT CLAIMS

Sport Dimension, Inc. v. Coleman Co. CAFC April. 19, 2016.

Coleman Company, Inc. (“Coleman”) appealed from a stipulated judgment of non-infringement entered by the US District Court (Central District California). Coleman challenged the district court’s claim construction on which the stipulated judgment was based and its exclusion of Coleman’s expert.

Coleman, an outdoor sporting equipment company sells an array of products, including personal flotation devices. Coleman owns United States Design Patent No. D623, 714 (“D’714 patent”) claiming “the ornamental design for a personal flotation device,” The D’714 patent generally discloses a personal flotation device with two arm bands connected to a torso piece. The torso piece is flat on its back and tapers toward a connecting strap on its sides.

Sport Dimension, Inc. (“Sport”) is a sports equipment and apparel company that sells water-sports -related equipment, including its Body Glove ® line of personal flotation devices. Sport’s Body Glove ® Model 325 is the accused device. Coleman’s design, have two armbands connected to a torso piece; while the torso section in the Body Glove® device extends upwards to form a vest that goes over a person’s shoulders.

Sport filed a declaratory judgment action in the district court requesting judgment that it did not infringe the D’714 patent and that the patent is invalid.

THE CAFC ADDRESSES THE EXCLUSION (BY THE DISTRICT COURT) OF COLEMAN’S EXPERT

The District Court excluded the testimony of Coleman’s expert, Peter Bressler (“Bressler”). Sport argued that Bressler was not qualified to testify on the functionality of the D’714 patent’s design, and the District Court agree. The District Court explained that while Bressler “appears to possess substantial experience in the field of industrial design,” Coleman “does not dispute—and Bressler’s deposition testimony makes it quite clear—that Bressler has no substantive experience in the narrower field of personal flotation device design.” Based on the court’s view that Bressler’s experience is insufficient to opine on the contested issues as an expert, therefore the district court excluded his testimony.

The district court found that the armbands, the armband attachments, the shape of the armbands, the tapering of the armbands, and the tapering of the side torso were all elements that serve a functional rather than ornamental purpose in the D’714 patent.” The CAFC agreed that “certain elements of Coleman’s design serve a useful purpose”, but rejected the district court’s ultimate claim construction. The CAFC found that the district court’s elimination of the armbands and side torso tapering from the claim entirely, resulted in the CAFC’s determination that its [district court’s] “construction runs contrary to our law”. The CAFC elaborated on this position when it stated: (1) “The district court’s construction in this case conflicts with that principle of design patent claim construction because it eliminates whole aspects of the claimed design”; (2) “the district court’s construction of the Design Patents to have no scope whatsoever fails to account for the particular ornamentation of the claimed design and departs from our established legal framework for interpreting design patent claims”; and, (3) “design patents protect the overall ornamentation of a design, not an aggregation of separable elements”.

The CAFC’s decision: For the reasons stated above, we reject the court’s claim construction, vacate its judgment of noninfringement, affirm its exclusion of Coleman’s expert, and remand for proceedings consistent with this opinion.

THE JURY’S ROLE IN PATENT TRAILS WAS UNDERMINED BY THE CAFC WHEN IT OVERRULED A JURY’S VERDICT

Case identification: ParkerVision v. Qualcomm

ParkerVision (“ParkerVision”) holds a patent for technology that converts a high-frequency electromagnetic signal into a low-frequency signal called the “baseband, comprised of a switch and a capacitor; consequently, both the switch and capacitor play a role in converting the input signal to the baseband. Qualcomm products also convert high-frequency signals to the baseband using a switch and a capacitor.

ParkerVision allegations were that Qualcomm’s products infringe its patents. ParkerVision presented the sole expert witness on the question of infringement, Dr. Paul Prucnal (“Prucnal”). Prucnal testified that that both the switch and the capacitor play a role in generating the baseband; concluding that Qualcomm’s products infringe on ParkerVision’s. Prucnal testified on cross-examination that the output of the switch is the baseband signal. However, on redirect, Prucnal reiterated that both the switch and capacitor together generate the baseband.

After deliberation the jury found that Qualcomm infringed ParkerVision’s patents and rendered a $173 million jury verdict for ParkerVision.

The district court threw out the verdict and granted Qualcomm judgment as a matter of law. The Federal Circuit affirmed the judgment, in favor of Qualcomm.

According to published reports on this case, the Federal Circuit affirmed the judgment in favor of Qualcomm by engaging in its own assessments of the testimony (at trial) and determined that the trial testimony did not support of finding of infringement. It is noteworthy that the Federal Circuit’s analysis affirming the district court’s decision to throw out the jury verdict did not cite any authority.

ParkerVision moved for rehearing, arguing that the fact-finder (the jury), and not the court, has the right to resolve inconsistencies in testimony. The Federal Circuit disagreed. The court admitted that generally, judges cannot second-guess juries, but held that “[w]hen the party with the burden of proof rests its case on a witness’s unexplained self-contradictory testimony, the court, in appropriate cases, may conclude that the evidence is insufficient” to support a verdict. It determined that “this is such a case” because Dr. Prucnal’s testimony was inconsistent, and “ParkerVision made no attempt to reconcile the two conflicting strands of its expert’s testimony.” The court also determined that Dr. Prucnal’s direct and redirect testimony was “vague,” but his testimony on cross-examination was “unequivocal.” Thus, it reweighed the evidence of infringement and again found it wanting.

On February 29, 2016 the US Supreme Court declined ParkerVision’s Writ of Certiorari requesting a review of the decision of the United States Court of Appeals for the Federal Circuit.

All may not be lost for ParkerVision. In January 2016 ParkerVision Parker instituted investigations at the International Trade Commission (“ITC”) against Qualcomm, Apple, LG and Samsung which focuses on different patent claims and inventions than those that were asserted in the earlier litigation. The USPTO recently denied institution of Inter Parties Review of certain of ParkerVision patent claims that are similar to claims asserted in the ITC Investigation. 

In response to the denial of its Writ by the US Supreme Court, ParkerVision CEO Jeffrey Parker stated, “We are disappointed that the Supreme Court decided not to hear and weigh-in on this important matter. The Federal Circuit’s lack of respect for jury verdicts, especially those that find in favor of patent holders, undermines the property rights that innovators depend on when investing significant amounts of resources to create new inventions. Patent owners are entitled to trial by jury under the Seventh Amendment, and jury verdicts are entitled to deference.  The Federal Circuit’s disregard for a jury’s factual findings in arriving at a verdict allows infringers to arbitrarily and unfairly capitalize on those inventions after the jury has found infringement.”

THE CAFC RULES THAT A BRI CLAIM CONSTRUCTION THAT DOES NOT REASONABLY REFLECT THE PLAN LANGUAGE AND DISCLOSURE WILL NOT PASS MUSTER

In re Man Mach. Interface Techs. LLC Fed. Cir. Apr.19, 2016 before Lourie, O’Malley, and Stoll, J. (Opinion for the court, Stoll, J.)

Man Machine’s ’614 patent titled “Man Machine Interface via Display Peripheral” is directed to a remote control device for making selections on television or computer screens. Claim 1 requires that the body of the device be “adapted to be held by the human hand.” Claim 1 also requires a multi-function “thumb switch being adapted for activation by a human thumb.” The thumb switch, which controls cursor movement and object selection on the screen, includes an annular switch including four switches that surround a center switch.

A third party requested ex parte reexamination of the ’614 patent, which the PTO granted. The examiner rejected the claims as anticipated and obvious, relying primarily on Japanese Patent No. 58-219634 (“JP ’634”), which discloses a desk -bound mouse and a “cursor locking key” surrounded by four “cursor moving keys” operable by a user’s finger to control cursor movement on a screen.

THE CAFC OPINION CONTINUALLY REINFORCES THE LIMITATIONS ON BRI CLAIM CONSTRUCTION

Note: All emphasis added.

While acknowledging that in reexamination, claims are given their broadest reasonable interpretation (“BRI”); the CAFC found that “the construction cannot be divorced from the specification and the record evidence.”

Based on the language in the specification, the CAFC rejected the Board’s unreasonably broad construction and construed “adapted to be held by the human hand” to mean “designed or made to be held by the human hand.” Similarly, it rejected the Board’s overly broad construction of “thumb switch being adapted for activation by the human thumb” and determined that Claim 1 expressly requires a thumb switch, not a finger switch.

This court’s (the CAFC) cases on BRI make clear that the proper BRI construction is not just the broadest construction, but rather the broadest reasonable construction in light of the specification Proxyconn, 789 F.3d at 1298 (“A construction that is unreasonably broad and which does not reasonably reflect the plain language and disclosure will not pass muster.”

The Court addressed the Board’s broad construction of “thumb switch being adapted for activation by a human thumb” as being merely capable of activation by a human thumb is unreasonable in view of the specification’s clear teaching that the patentee intended a narrower meaning. As we have explained ….the broadest reasonable interpretation must be reasonable in light of the claims and specification.

Because the Board’s anticipation rejection was based on erroneous claim constructions and the rejection is not supported under the proper constructions, we reverse the Board’s finding that JP ’634 anticipates claim 1 of Man Machine’s ’614 patent.

Regarding the obviousness rejections of claims 7, 9, and 17, the Court stated: We (the CAFC) cannot consider the obviousness rejections of claims 7, 9, and 17 because neither party introduced those arguments on appeal besides challenging the claim constructions on which they are based. Accordingly, we vacate those rejections and remand for the Board to consider the obviousness rejections of claims 7, 9, and 1 7 in view of the correct claim constructions.
Regarding the obviousness of claims 1, 4, 8, and 10, the Court affirmed the Board’s determination that these claims would have been obvious over Florin in view of JP ’634.

This is an interesting case that seems to support the proposition that, at least some Judges in the CAFC, are beginning to lean towards the position in this case, which is (citing Proxyconn) that “A construction that is unreasonably broad and which does not reasonably reflect the plain language and disclosure will not pass muster.”

Can Small Businesses Avoid Patent Trolls?

With patent litigation pending in Congress, it is not immediately clear how effective new rules will be for deterring patent trolls and bogus lawsuits. But businesses can nevertheless be on guard to protect against spurious litigation by employing several common sense techniques, such as the ones highlighted below, to avoid litigation with entities that enforce patents with no intention or capability of manufacturing a product.

Be thorough in your research. Before any product or service you offer enters the free market, diligently conduct a search to ensure that you are not infringing on any existing patent. The U.S. Patent and Trademark office (USPTO) provides a search page with texts and images, and an instructional manual to guide viewers on how to perform a patent search. In the event you receive a letter alleging infringement, it is important to research who the plaintiff is, whether he is a legitimate patent holder and the facts as to how your product infringes on his patent.

Consider obtaining intellectual property insurance. Several insurance companies have begun to offer intellectual property insurance to protect businesses if they are subject to legal action. The business must be insured prior to any legal action occurring.

Secure you digital presence. According to experts in the field, patent trolls are skilled at finding vulnerable parties to burden with lawsuits. Businesses can make this process difficult by developing an online registration system for parties who want to view your documents, or undertaking a more restrictive procedure that limits document review to people who work within the business.

Connors & Associates provides experienced legal advice in the areas of patent, trademark and copyright law. John Connors and his team of associates have the expertise to counsel clients about protecting their intellectual property rights. Contact Connors & Associates at (949) 833-3622 or visit them online to learn more about our services or to schedule a consultation.

Intellectual Property Wars Between Technology Companies Cooling Off

Big name technology companies, Microsoft Corp. (Microsoft) and Google Inc. (Google) have been battling for years in a series of patent-related actions related to mobile phones, Wi-Fi and other technologies. Recently, the companies jointly stated that they have reached an agreement that would result in a dismissal of approximately 20 pending patent lawsuits between them. The announcement, however, did not exclude the possibility of future infringement litigation.

The cessation of patent litigation between the technology giants may be indicative of larger changes in the future. First, the latest development demonstrates a shift toward licensing over litigation. This is further confirmed by the recent news of a patent cross-license agreement between Google and SAP. The companies proclaimed their partnership as an opportunity to allow software developers to create and operate without the “distractions from unnecessary patent litigation.”

Another question that arises from the Microsoft-Google announcement is whether Microsoft is ready to abandon some of its questionable patent practices, such as “privateering,” which involves supplying shell companies with patents for the purpose of bringing actions against rival competitors. It is not clear whether the termination of litigation between the companies also includes these other indirect litigation activities.

The truce between the companies also highlights the issue of Google’s intentions with respect to the thousands of patents it has secured in recent years. Google has been an outspoken advocate for patent reform and seems committed to a strategy of collaborating with other companies to eschew patent litigation. But it remains to be seen whether Google will eventually follow the lead of similar companies and turn their patent holdings into a revenue stream from licensing royalties.

Connors & Associates provides experienced legal advice in the areas of patent, trademark and copyright law. John Connors and his team of associates have the expertise to counsel clients about protecting their intellectual property including pursuing, filing and enforcing patent rights. Contact Connors & Associates at (949) 833-3622 or visit them online to learn more about our services or to schedule a consultation.

How to Combat Intellectual Property Infringement Online

Online infringement of copyrights and trademarks poses a significant threat to companies as new and more sophisticated methods of online infringement are implemented. But there are several steps companies can take to minimize the effects of online infringement and maintain their intellectual property rights.

Register all your trademarks and copyrights. Although federal registration seems like an obvious action for any business, for various reasons businesses may decline to register their trademarks or may simply initiate the process too late. Federal registration confers several benefits on the registrant. For copyrights, registration is necessary to preserve the rights to initiate a lawsuit in the future and to allow the recovery of statutory damages and attorney’s fees. For trademarks, registration establishes priority over ownership of that trademark name and bars later users from utilizing that trademark or one that is confusingly similar.

Consider other monitoring resources. Refer to social media websites that maintain take-down measures in the event of copyright or trademark infringement. Companies such as Twitter and eBay have helpful resources and reporting procedures for trademark and copyright infringement incidents and may be useful in deterring violations without resorting to litigation. In the event of a more systematic and widespread breach of your intellectual property rights, a formal enforcement program would be warranted.

Employ self-help procedures. It is always helpful to self-monitor the internet and other social media outlets to ensure that your intellectual property rights are not being violated. Infringement can be executed through various online tools, such as meta-tags, pay-per-click advertising pages and the sale of counterfeit products through auctions.

Connors & Associates provides experienced legal advice in the areas of patent, trademark and copyright law. John Connors and his team of associates have the expertise to counsel clients about protecting their intellectual property rights. Contact Connors & Associates at (949) 833-3622 or visit them online to learn more about our services or to schedule a consultation.

Yelp Sues Websites for Selling Yelp Reviews

In February 2015, Yelp, Inc. (Yelp) filed a lawsuit in California against three companies offering to post false positive reviews on Yelp’s website. Yelp maintains that these companies engaged in several illegal practices, including trademark infringement, by utilizing Yelp trademarks to advertise their review services.

The pivotal issue in this lawsuit is whether the defendant’s use of Yelp’s trademarks constitutes fair use or violates the plaintiff’s trademark rights. Similar to copyright law, fair use is a legally recognized defense to an infringement action and is rooted in the freedom of speech guarantees granted by the First Amendment. The fair use doctrine establishes limitations for trademark protection in recognition of the fact that most trademarks consist of symbols or words that are commonly used in the public domain and cannot be entirely restricted from ordinary usage.

In the context of using another company’s trademark to refer to that entity or its services, the Ninth Circuit court developed three conditions to determine fair use. If the following “nominative fair use” criteria are met, then a company may refer to a trademarked name: (i) the use of the mark is necessary to distinguish the service, (ii) only a bare minimum reference to the mark is made to identify the service and (iii) the user does not imply that it is affiliated with the trademark owner in any capacity.

Nominative fair use is relied upon in several common scenarios, such as when a business mentions a competing product in an advertisement. However, Yelp claims that the defendants are engaged in practices that go beyond just identifying Yelp by name; rather, Yelp claims, the defendants have appropriated Yelp’s name and design in such a way as to create actual confusion among consumers as to whether these companies are affiliated with or supported by Yelp.

Connors & Associates provides experienced legal advice in the areas of patent, trademark and copyright law. Contact Connors & Associates at (949) 833-3622 or visit them online to learn more about our services or to schedule a consultation.

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