January 2015

Cislo & Thomas LLP Once Again Supports Hearts for Hope Gala – “A Future of Hope” in 2015

For the second consecutive year, Cislo & Thomas LLP is proud to be a Guardian Angel Sponsor for the Union Rescue Mission’s 2015 Hearts for Hope Gala “A Future of Hope,” which benefits the Union Rescue Mission’s Hope Gardens Family Center.  We invite you to join Cislo & Thomas in supporting the Hope Gardens Family Center to bring hope and a brighter future to the women and children experiencing homelessness in Los Angeles.  To learn more about how to donate or to purchase tickets to the 2015 Hearts for Hope Gala, please contact Rosie Perez of the Union Rescue Mission at 213-673-4593 or rperez@urm.org.  Together we can help give hope to those in need.  Thank you for your support!

2015 UCLA Tech Forum Sponsored by Cislo & Thomas LLP

Cislo & Thomas LLP is proud to be a sponsor along with Raytheon Company, Northrop Grumman Corporation and Lockheed Martin Corporation at the upcoming 2015 UCLA Tech Forum.  This year’s forum addresses Robotics and Technologies of the Future with keynote speaker, Dr. Marc Raibert, Boston Dynamics Founder.  Please join Cislo & Thomas LLP at the UCLA Tech Forum on Tuesday, February 3, 2015 from 10:00 a.m. to 5:00 p.m. at Carnesale Commons, UCLA.  For more information, please visit the 2015 UCLA Tech Forum website.

Cislo & Thomas LLP Welcomes Our New Patent Attorney

We are excited to welcome our newest patent attorney, Joann Y. Chen, Esq. to our West Los Angeles office.  Joanna received her B.S. in Bioengineering from the University of California, Berkeley in 2011 and her J.D. from Loyola Law School with a concentration in Intellectual Property Law and a sub-concentration in Patent & Technology in 2014.  Additionally, Joanna is admitted to the State Bar of California and the United States Patent and Trademark Office.  She has experience in the prosecution and litigation of both trademarks and patents for various technologies, including bioenergy and medical devices.  We welcome Joanna and look forward to her many accomplishments at Cislo & Thomas.

Patent Laches Issue Revisited

In light of Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), a 2014 Supreme Court case which held that laches does not apply to copyright suits seeking for damages only within a fixed time frame, the Federal Circuit recently agreed to review en banc A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992). SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, Fed. Cir., No. 2013-1564, 12/30/2014. The Court in Aukerman held that for patent infringement cases, even claims seeking damages only within the six-year period limited by 35 U.S.C. § 286, laches may still apply if (a) the patentee’s unreasonable and inexcusable delay in bringing suit, and (b) material prejudice to the alleged infringer attributable to the delay.

The December 30th Federal Circuit en banc order called for briefs to reconsider Aukerman in light of Petrella in terms of (1) whether the court should overrule the 1992 Aukerman decision such that the defense of laches is applicable to bar a patent infringement claim for damages based on 35 U.S.C. § 286; and (2) whether the defense of laches should be available under some circumstances to bar an entire infringement suit for either damages or injunctive relief? See, e.g., Lane & Bodley Co. v. Locke, 150 U.S. 193 (1893). In Petrella, Justice Ginsburg rationalized that “each infringing act starts a new limitations period,” and any harm that is caused by the plaintiff’s delay in bringing the suit is offset by the Copyright Act’s three-year statute of limitations.

Thus, if the rationale under Petrella is to be applied to Aukerman, taking into consideration the differences in copyright and patent law, on the face it seems likely that the Federal Circuit may overrule its previous decision and hold that the six-year damages limitation under 35 U.S.C. § 286 would be comparable to a statute of limitations and therefore effectively preempts the laches defense. However, experts have noted that unlike the copyright statute, as to which there was a split among the circuits—a split the Supreme Court was obliged to resolve—the Federal Circuit has consistently interpreted the patent statute as permitting laches to restrict damages under carefully defined circumstances. And since the Federal Circuit has virtually exclusive jurisdiction over appeals in patent infringement case, there is no danger of a split arising. The upcoming holding will set important precedent for future patent infringement cases asking for damages under 35 U.S.C. § 286.

Toyota Releases Patents to Public Domain

During CES 2015, Toyota surprised its audience by allowing its 5,680 patents relating to hydrogen fuel-cell cars to be royalty-free between now and 2020. Of the 5,680 patents, 1,970 relate to actual fuel cell stack, 3,350 relate to fuel cell power control software, 290 relate to hydrogen storage tanks, and 70 relate to hydrogen production technologies.

Inspired by Tesla’s generosity to the public with its IP, Toyota hopes this strategic move will drive adoption of hydrogen fuel cell technology in the car market worldwide. The company says that companies will be able to negotiate the use of Toyota’s patents by providing Toyota access to their patents with similar conditions. In order for these negotiations to be successful, however, Bob Carter, SVP of automotive operations, believes that there needs to be “a concerted and unconventional collaboration between auto makers, government regulators, academia and energy providers.”

Also announced during CES 2015, Toyota will be launching its first fuel cell vehicle, the Mirai, later this year.

Trademark Filing Fees Reduced

Effective Jan. 17th, 2015, there is a reduced filing fee for qualified small-business owners for registering a federal trademark with the USPTO. Last year, the USPTO received over 400,000 trademark applications, amounting to almost a 5% increase from 2013. This reduced filing fee will likely result in even more applications for the upcoming year.

Filing online using the Trademark Electronic Application System (TEAS), an applicant is given two options: regular and TEAS Plus. TEAS Plus requires a bit more information and is generally less expensive— it is being reduced from $275 per class to $225 per class. Regular has been reduced from $325 to $275 per class if the applicant authorizes email communication and agrees to file all responses electronically during prosecution; the option will be known as TEAS Reduced Fee.

For filing fees of renewal documents filed online, fees have been reduced from $400 to $300. On an unrelated but nonetheless positive note, the USPTO will also be sending courtesy email reminders of renewal filing deadlines. Since an active trademark can last indefinitely as long as the proper renewal documents are filed in time, this courtesy will hopefully save many unnecessary headaches.

Please call Cislo & Thomas LLP with any questions regarding whether or not you qualify for the reduced trademark filing fees.

Actress’ Copyright Claims Over A Film She Starred In Revisited

In 2012, actress Cindy Lee Garcia starred in a controversial short film uploaded on Youtube called “Innocence of Muslims,” wherein she plays a character that defames the Prophet Mohammed and has gotten death threats since the release of the video. Garcia has actively fought to have the short film taken down and a three-judge panel from the Ninth Circuit Court of Appeals ruled 2-1 that she had a copyright claim over her performance and ordered the defendant, Google, to remove the video at her request.

This ruling received heavy criticism with law professors, Hollywood directors, and media companies filing briefs in support of Google’s appeal. Although this may be an extraordinary case wherein the public may believe that the end justifies the means, providing such precedent of giving actors a copyright claim to the movies or films they star in may create dangerous unforeseen legal consequences.

As Alex Lawrence, an IP attorney at Morrison & Forester points out, “prior to this case, there wasn’t any question that an actor in the restaurant in the scene of The Godfather doesn’t have a copyright claim in the movie.”

The Ninth Circuit has agreed to re-examine the case with an eleven-judge panel suggesting the larger panel will likely overturn the prior ruling. Corynne McSherry, an IP director at the Electronic Frontier Foundation, stated that she “would be shocked if the court decided to rehear the case simply to reinstate the old opinion.”

Debatable Filing for “I Can’t Breathe” Trademark

On December 13th, 2014, An Illinois woman, Catherine Crump filed a Trademark Application for “I Can’t Breathe” with the USPTO for use in relations to apparel. These famous last words of Eric Garner have been used by protestors on banners and clothing throughout the country since the July incident. The controversy sparked when a police officer held Garner in a chokehold as he repeated “I can’t breathe” until his last breath.

Crump revealed that she has been using the phrase since August 18th but did not relieve her intentions for registering the mark though she assured reporters that she was not looking for financial gain by attempting to register the trademark.  Crump further acknowledges that she has no personal or business relations to the Garner family.

Phrases like “I Can’t Breathe” have been sought after for trademark protection a handful of times in the past couple of years (“Occupy Wall Street,”  “Justice for Trayvon,” & “Linsanity”) and have been the center of debate in terms of the balance between ethical lines for trademark ownership and the fundamentals of American capitalism.

Post-Punctured Tea-Pods Are Not “Water-Permeable”

The Federal Circuit affirmed the lower court’s holding in Teashot. LLC v. Green Mountain Coffee Roasters Inc. et al., No. 14-1323, Fed. Cir. that tea-filled K-Cups do not infringe T-Shot’s Patent No. 5,895,672.

K-Cups, which are disposable coffee-pods or tea-pods used in Keurig machines, were alleged to be infringing T-Shot’s patents, which cover a disposable tea-pods with a “sealed body … constructed of a water-permeable material which allows flow of a fluid through said sealed body to produce a tea extract from said tea composition.” Essentially the T-Shot tea-pod is tea wrapped and sealed within a coffee filter.

K-Cups, on the other hand, are constructed of impermeable foil lids combined with a plastic cup-shaped exterior, wherein the tea composition and filter paper are placed within. T-Shot’s argument was that, once punctured through the foil, the K-cup also becomes water-permeable. On appeal, the Federal Circuit rejected the argument and that a hole-punching scheme does not fit within a “water permeable” requirement.

Given that the patent was issued without amendment, there could have been a doctrine of equivalents theory.  However, the district court refused to allow the new infringement theory to be presented because T-Shot waived its right to raise the doctrine of equivalents by failing to timely disclose it as an infringement theory; the Federal Circuit affirmed that holding.

This case sets precedent that the qualities of an original state of the invention, such as being “water-permeable,” does not extend to after a physical alteration is made to the object.

Teva v. Sandoz: Federal Circuit Reviews for Clear Error on Evidence Extrinsic to Patents

The Supreme Court held in Teva Parmaceuticals USA, Inc. v. Sandoz, Inc., No. 13-854, 1/20/2015 that the Federal Circuit erred by applying a de novostandard of review, considering the question for the first time and disregarding the decisions below, rather than applying the “clear error” standard to the district court’s factual findings, giving district courts more deference.  Rule 52(a) of the Federal Rule of Civil Procedure requires deferential “clear error” review over any findings of fact but the Federal Circuit has consistently reviewed claim construction as conclusions of law that are allowed for de novoreview.

In Teva, the claims at issue relates to methods for manufacturing copolymer-1, the active ingredient in Copaxone®, owned by Teva and used to treat multiple sclerosis. Teva sued Sandoz for patent infringement, wherein Sandoz’s primary defense was that the claim term “average molecular weight” had multiple possible meanings to a person of ordinary skill in the art and that the claim should be invalid for indefiniteness. The district court rejected the defense and held that there was enough in the specification for a person of ordinary skill in the art to understand that the term was referring particularly to the peak average molecular weight (Mp).

On appeal, the Federal Circuit reversed and reviewed the issue of indefiniteness de novo. The court found that “plain language does not indicate which average molecular weight measure is intended” and “neither the specification nor the prosecution history resolved this ambiguity.” Teva Pharms. USA, v. Sandoz

On January 20, 2015, the Supreme Court vacated and remanded the Federal Circuit’s decision by a 7-2 vote. The Court explained that in its earlier decision Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), “the ultimate question of claim construction is for the judge” however “the appellate review of actual matters” still follows an ordinary rule for clear error. Therefore, when it comes to claim constructions based only on evidence intrinsic to the patent such as the claims, specifications and prosecution history, the Federal Circuit may review de novo. However, extrinsic evidence, such as “background science or meaning of a term in the relevant art during the relevant time period,” must be review for clear error on appeal.  Since the Federal Circuit failed to accept the district court’s finding of Teva’s expert’s explanation about “how a skilled artisan would understand the way in which a curve created from a chromatogram data reflect molecular weights” without any determination of clear error, the Federal Circuit opinion was vacated and remanded for further proceedings.

Here, the Supreme Court was able to clarify the boundaries of each standard of review especially for cases that involve claim construction that reach the Federal Circuit.  However, in terms of whether Teva’s claims will be invalidated on remand under the clarified Supreme Court ruling is not as clear.

Commil v. Cisco: Good Faith or Reasonable Belief of Patent Invalidity Sufficient for Defense?

The issues before the Supreme Court are whether a good-faith or reasonable belief that a patent is invalid is enough for a defense for inducement under 35 U.S.C. §271(b) and whether the jury instructions for inducement adequately met the requisite knowledge standard set out in Global-Tech Appliances v. SEB, 131 S. Ct. 2060 (2011).

In Commil, Commil sued Cisco for making and using allegedly infringing equipment and for inducing others to infringe Commil’s patent that relates to a method for implementing wireless networks. A jury returned a verdict that Cisco did directly infringe but did not induce infringement and the judge granted a retrial on the inducement issue. During retrial, the district court excluded certain evidence related to Cisco’s good-faith belief that the patent was invalid and instructed the jury to find inducement if they found that Cisco “actually intended to cause the acts that constituted direct infringement,” and “knew or should have known that its actions would induce actual infringement.”  Commil USA, v. Cisco Sys.

On appeal, the Federal Circuit remanded for a new trial on inducement based on Global-Tech, in which the Supreme Court had stated that inducement requires both knowledge of the patent’s existence and knowledge that the induced acts would constitute patent infringement. Therefore, the court held that the district court’s instruction of “knew or should have known” allowed the defendant to be liable based merely on negligence.  The court also held that the district court should not have excluded the good-faith evidence of invalidity because it may negate the specific intent to have another infringe. The amicus curiae brief by the Department of Justice, however, argued that recognizing a “good-faith belief in invalidity” as a defense to inducement undermines a patentee’s ability to enforce the patent. We await the Supreme Court’s stance on this issue as well. For the time being, it would be prudent for one to get an early opinion of counsel regarding the validity of a patent if there is any concern that the patent would be asserted against him or her so as to be able to negate the intent aspect of induced infringement.