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August 2017

Nokia Selling Over 6,000 of its Patents

Takeaway: Nokia Corp. acquired Alcatel-Lucent for approximately $17 billion in 2015 and is now in the process of selling its acquired patents through an investor pool to venture-backed startups.

Through Aqua Licensing LLP, a patent advisory and transaction firm, Nokia and Alcatel-Lucent will be parsing through a portfolio of 4,260 patent families; 6,069 granted patents; and 734 patent applications.

According to Aqua, the portfolio covers technologies such as wireless services, fixed-access and optical networks, hardware and components, user experience methodology, mechanics, and materials.

The company states that the intellectual property is going for cash purchases on a first-come, first-served basis.

“Nokia and Alcatel-Lucent have built a compelling portfolio fundamental to many growth markets,” Aqua managing director Mark McMillan said in a statement Thursday. “We see significant value in parsing this portfolio out to those who will see highest value from the ownership of these strategic assets.”

However, Nokia’s actions are contrary to what it allegedly promised before dropping out of the phone business.  Apple stated that Nokia promised to license out patents that cover standard and essential telecommunications technologies at fair and reasonable terms.  However, by going through Aqua, Nokia may be able to extort more value from its portfolio of patents.

Federal Circuit Confirms Invalidity of Podcasting Patent in Favor of Electronic Frontier Foundation

Takeaway: In a highly publicized patent infringement case, Electronic Frontier Foundation has come away with a win from the Federal Circuit, invalidating a patent concerning podcasting. This was an important win for EFF and its mission to fight patent trolls. The initial suit was filed back in 2013 in an effort to fight for the podcasting industry.

The court upheld a decision by the Patent Trial and Appeal Board (“PTAB”). The PTAB originally found the patents-in-suit to be invalid under 35 U.S.C. § 102 and/or obvious under 35 U.S.C. § 103.

The Electronic Frontier Foundation (“EFF”) is a non-profit organization that claims to defend civil liberties in the digital world. In this suit, it represented popular podcasters in an attempt to invalidate the patents held by Personal Audio LLC.

An important issue for the court was standing. Because Electronic Frontier Foundation was a non-profit organization that was not infringing the product, the issue of standing was an initial hurdle that needed to be considered.

In Consumer Watchdog v. Wisconsin Alumni Research Foundation, 753 F.3d 1258 (Fed. Cir. 2014), the Federal Circuit held that a non-profit organization, described as representing the public interest, did not have standing to appeal to the Federal Circuit from the PTAB decision that sustained the validity of the patent Consumer Watchdog had challenged.

Fortunately, the party that brought the appeal was Personal Audio. Because Personal Audio satisfied the case and controversy under the constitutional requirements, there was no issue as to standing for EFF. Therefore, the court ruled that EFF is not constitutionally excluded from appearing in court to defend the PTAB decision in its favor, even though there likely would have been an issue if it were the sole entity bringing the suit in the first place.

At the PTAB, it initially found the patents-in-suit to be invalid as anticipated and obvious. The Federal Circuit agreed with the PTAB’s claim construction, finding no error in its analysis. For this reason, the Federal Circuit affirmed the PTAB’s decision, finding that the cited prior art anticipated the patents-in-suit.

Some of the people and entities that EFF was assisting were Adam Carolla, HowStuffWorks, CBS, and NBC. EFF has an ongoing effort to not only fight patent trolls, but also “defend free speech online, fight illegal surveillance, advocate for users and innovators, and support freedom-enhancing technologies.”

Federal Circuit Unconventionally Distributes Amdocs a Software Patent Win

Takeaway: It seems unconventional for the Federal Circuit to find software or business methods to be valid in light of the Alice v. CLS Bank decision back in 2014. The court seems to have carved out an exception that allows for known concepts to be applied in new platforms to create a protectable invention.

Even though patent eligibility in software-related inventions has been slow to recover from Alice v. CLS Bank, small steps have been made to bring clarity to the issues in the software industry over the last couple of years.

One of the more recent decisions in this line of post-Alice cases is Amdocs v. Openet Telecom, where the majority opinion reversed the district court’s decision to invalidate the claims and seemingly has assembled yet another piece of the software patent puzzle.

The software involved in Amdocs pertains to a software system designed to solve an accounting and billing problem faced by network providers. The district court initially found that the software, like many other products before, contained ineligible subject matter under section 101 through the two-step Alice framework.

Under step one of the Alice framework, the court looks to whether the claims at issue are directed to a patent ineligible concept (i.e., laws of nature, natural phenomena, and abstract ideas). If so, the court considers elements of each claim, both individually and as an ordered combination, to determine whether the additional elements transform the nature of the claim into a patent-eligible application. In the second step, the court looks to see if there is an element or ordered combination of elements in the claims that are sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the ineligible concept.

Here in Amdocs, the court found the claims to be similar to their recent decisions that have held in favor of patent eligibility. This is because the court found sufficient evidence of an inventive concept, in light of the specification, that added significantly more to the patent than just the abstract idea. For a further discussion on the most recent line of cases leading up to this decision, see the article “Is the Conundrum of Software Patentability Gone?” by Mark Nielsen, Ph.D., Esq.

As mentioned previously, the software involved was a system designed to solve an accounting and billing problem faced by network providers. The software essentially used computer code to enhance an accounting record from multiple sources. It would begin by retrieving one accounting record; if there was information missing from the record, the computer code would iteratively “enhance” the accounting record from differing sources to improve the accuracy and completeness of the information provided in the record.

The court found this concept to be an abstract idea under the first step of the Alice framework. More importantly, where this case turned, was on the court’s interpretation of the term “enhance.” The term “enhance” was given the meaning “to apply a number of field enhancements in a distributed fashion.” This definition shed light on the inventive portion of the patent, which the court found to be a “distributed network” that was used to make the process more efficient.

The court found that even though the patent includes generic concepts like network devices, computers, and code that gathered information from the Internet, it also entailed an “unconventional technological solution (enhancing data in a distributed fashion) to a technological problem (massive record flows which previously required massive databases).” This unconventional technological solution, applied to generic concepts, was, in the eyes of the court, an improvement in computer functionality that amounted to significantly more than the abstract idea of data gathering and record population.

Interestingly, the concept of distributed architecture has been around for a long time and is fairly common in the software industry. With that said, this case brings light to the fact that just because something has been around for a long time, does not mean the concept will prevent a patentable application of that theory. However, as the dissent in this case points out, “limitations on the context?as opposed to the manner?of accomplishing a desired result is typically not inventive, even if the context is novel.”

The final takeaway from this case seems to be, as an inventor or patent practitioner, we need to consider the manner in which an invention improves a technological problem. Generally, narrowing the issues to a contextual area of industry or practice will not be sufficient to make a concept inventive. Rather, at least in some circumstances, for a patent with generic concepts to be inventive, there will also need to be some type of limitation that is an unconventional technological solution to a technological problem.

The Wonderful Company, Owner of Slogan “Get Crakin’,” Sues UTZ Quality Foods for “Get Snacking!”

Takeaway: On August 18, 2017, The Wonderful Company, owner of the trademark “Get Crackin’,” and Wonderful Pistachios & Almonds LLC, a distributor of the Wonderful® brand of pistachio nuts, filed a suit against UTZ Quality Foods and Rice Investments and alleged that UTZ and Rice Investments were infringing on the “Get Crackin’” mark with their use of the mark, “Get Snacking!”

The mark “Get Crackin’” is a slogan that has been popularized by celebrities such as Khloe Kardashian and Snoop Dogg. (https://www.youtube.com/watch?v=GzHlkCI8y2Q) The Wonderful Company filed for its application in 2009 and obtained registration in 2010. The Wonderful Company was first made aware of UTZ’s use of the “Get Snacking!” mark in March 2017. (https://youtu.be/tboSulZzwxs). Consequently, the Wonderful Company sent a cease and desist letter to UTZ. However, the two companies could not come to an agreement about how to resolve the dispute.

According to the complaint, The Wonderful Company spent over $300 million for the marketing, promotions, and sales of its “Get Crackin’” mark and brand associated with the mark, resulting in it becoming the #1 selling nut-based snack product in the U.S. The Wonderful Company claims that because the two parties sell similar snack products, are marketed to the same demographics, and sold through the same channels, Defendant’s selling, marketing, and distributing of its UTZ products has caused irreparable harm because consumers would mistakenly think UTZ”s products were affiliated with The Wonderful Company.

The Wonderful Company alleged federal trademark infringement, violation of the Lanham Act Section 43(A), unfair competition under California Business & Professions Code Sec. 17200 et. seq., and unfair competition under California common law. The Wonderful Company claims that it is entitled to preliminary and permanent injunctions and asked the court to find the case exceptional and award attorney’s fees.

Ninth Circuit Clarifies Family Movie Act and DMCA in Relation to a Movie Filtering Service Permitting the Streaming of Films Without Nudity and Violence

Takeaway: The Ninth Circuit recently affirmed an injunction against VidAngel Inc., a movie filtering service that allows users to stream films without nudity and violence, in favor of Walt Disney Studios and other Hollywood studios.

VidAngel claimed that its services are protected under Family Movie Act (“FMA”), an obscure 2005 federal statute that was aimed to let people edit out dirty portions of authorized copies of movies without violating copyright law. VidAngel also claimed that it was protected by copyright’s fair use doctrine.

However, the Family Movie Act only exempts a party from liability for copyright infringement if it provides a filtered performance or transmission that was from an authorized copy of the motion picture. As for the law of fair use, it does not sanction broad-based space-shifting or format-shifting. The anti-circumvention provision of the Digital Millennium Copyright Act covers technological protection measures that control access to, and use of, a copyrighted work.

Rightly so, the panel rejected both claims, upholding a ruling that VidAngel violated the Digital Millennium Copyright Act (“DMCA”). The court’s decision seemed to echo the complaint’s rationale that allowing VidAngel to claim protection under these statues would lead to a “massive loophole in the DMCA and copyright protection” and “absurd results Congress could not have intended.”

Partner Jeffrey Sheldon Offering PLI Course “Patent Law Practice: Learn to Be a Successful Patent Practitioner”

We are proud to announce that Cislo & Thomas’ partner Jeffrey Sheldon, Esq. will be teaching a 10-week PLI course entitled “Patent Law Practice: Learn to Be a Successful Patent Practitioner 2017,” which started on August 24, 2017. The course features a combination of live webinars, pre-recorded lectures, reading and writing assignments and is a perfect fit for attorneys and others seeking to become accomplished patent practitioners as well as patent attorneys and agents who want to sharpen their patent prosecution skills.

The course emphasizes real-world, hands-on practice, which includes conducting a live interview with an inventor. Each week includes a 30-45 minute lecture, which students can watch on-demand anytime, a “homework” assignment, and a weekly live interactive review of student assignments, in which Mr. Sheldon gives tips and expert advice. The course materials feature many chapters of his PLI treatise, “How to Write a Patent Application,” Third Edition.

This course is a unique opportunity to gain substantial expertise in patent practice. Registrants this week can save $500.

Registration is at: https://tinyurl.com/y8kp7xlu

If you need more details, please contact Jeff at 626-676-1201.

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