November 2016

New Online Filing System of “Safe Harbors” Under Digital Millennium Copyright Act (“DMCA”)

Takeaway: Beginning December 1, 2016, the United States Copyright Office will be using a new electric filing system for registering websites, apps, and other online platforms for “safe harbor” protection under Section 512 of the Digital Millennium Copyright Act (“DMCA”).  If you have never filed designated agent information with the Copyright Office for your online platform, you should consider taking action immediately.  If you have previously designed an agent using the paper process, you are required to submit a new designation using the online system within one year—i.e., by no later than December 31, 2017.

The DMCA provides safe harbors from copyright infringement liability for any online service providers (including apps and website operators) when, for example, the website operator is not aware that a hyperlink on its website is infringing content hosted on another site.  By availing itself of the DMVA safe harbors, the online service provider is required to designate an agent who will receive notification of claimed copyright infringement.

Prior to this new online filing system, agent designations were required to be filed with the Copyright Office on a paper form either in hardcopy or scanned and sent via e-mail, and the designations would be posted on the website in PDFs.

Just as under the old system, service providers must keep their designations accurate by updating information if the agent designation has changed. Further, agent designations will expire and become invalid three years after registration, so designations must be renewed every three years.

Happy Belated Thanksgiving! Here Are Some Turkey-Related Patents

Takeaway: 739 granted patents have the word “turkey” in the claims and the following are a few of the more interesting ones.

1Method and apparatus for manually activated turkey decoy – Patent No. 6,487,810

A method and apparatus for a manually activated turkey decoy simulating full strut gobbler tail movement. The turkey decoy comprises a tail rod with a pulling arm and attached tail-feathers, the tail rod incorporating a spring mechanism, and the tail rod being rotatably, coaxially, and removably attached to a ground stake. A pull line is attached to the pulling arm. After inserting both the turkey decoy and turkey decoy body into the ground, and thereafter optionally routing the pull line using guide stakes, the pull line may be pulled to cause tail-feather movement. The turkey decoy may also be adapted to move an entire decoy.

2Ready-to-cook bird product – U.S. Patent 7,131,906

An edible bird with an internal cavity provided by removal of the visceral parts of the bird and most or all of the internal bone structure. Disposed within the cavity of the bird body, is an edible filling and heat transfer elements to transfer heat directly into the edible filling when the bird is cooked.

3Process for de-boning a turkey – U.S. Patent No. 6,572,467

A method of de-boning a fowl comprises; making an incision along a leg bone, exposing a leg joint between the leg bone and the rest of the turkey, severing the leg joint; removing two segments of a wing; making an incision along a third segment of the wing; exposing a wing joint between the wing bone of the third segment and the rest of the turkey, severing the wing joint; making an incision along the back of the fowl, separating the flesh of the back from the backbone and ribcage; severing a joint between the thighbone and the rest of the fowl; making an incision along a shoulderbone; removing a ribcage from the rest of the fowl; separating flesh from a breastbone and removing the breastbone; removing a wishbone; making an incision along a thighbone, exposing and severing the thigh joint.

Turkey trophy mounting kit – Patent No. 5,064,725

A turkey trophy mounting kit adapted to be employed by a hunter to process for preserving, and then affixably mount upon the provided plaque for display, a cured and dried spread wild turkey gobbler tail fan, and the beard and feet thereof.

No Preliminary Injunction Against Yelp For Using Same Tagline as Local Property Management Company

Takeaway: In TPW Management, LLC v. Yelp Inc., a federal judge in the Northern District of California denied a motion for a preliminary injunction that sought to enjoin Yelp’s use of TPW Management’s trademarked tagline.

The ruling exemplified how even when a company tries to enforce a registered trademark, they must still show that it would be likely to succeed on the merits under the Lanham Act or that there was irreparable harm. TPW Management, LLC v. Yelp Inc., Case No. 16-cv-03063-YGR (N.D. Cal. Oct. 25, 2016).

Earlier this year, TPW Management, LLC, a Vermont-based property management firm, sued Yelp for trademark infringement and unfair competition, alleging that Yelp’s use of the tagline “We Know Just the Place” infringes on their registered trademark.  TPW sought a preliminary injunction prohibiting Yelp’s continued use of the phrase, claiming that Yelp’s verbatim use of its trademarked tagline in conjunction with the similarity of services offered by the two companies confused TWP’s customers, was irreparably harming TPW’s brand.

In the court analysis, two Sleekcraft factors were of special importance in the court’s likelihood-of-confusion analysis. First, in viewing the similarity of the marks, the differentce between Yelp and TPW was important, meaning that the court did not view the tagline in isolation. According to the court, this sort of pairing “greatly reduces, if not completely eliminates, the risk of confusion that arises from the similarity of the marks.”  Second, the court treated the tagline as only a “descriptive” mark that merely described the nature of TPW’s services (and Yelp).  This means that in order to obtain protection, there needed to be a showing that it acquired a sufficient secondary meaning, of which TPW had no evidence.

The only evidence TPW offered to support its loss-of-control argument was a declaration to that effect written by TPW’s marketing director, which the court held to be insufficient evidence to support a finding of irreparable harm as a matter of law.

This case is still in the midst of litigation—only time will tell if Yelp will be allowed to continue using the tagline “We Know Just the Place.” For the time being, it can.

China Potentially Further Lowers Barrier to Business and Software Patents

Takeaway: China’s State Intellectual Property Office (SIPO) recently published a Draft of Revisions to the Patent Examination Guidelines and seems to intend to strengthen the applicants’ position for software and business method-related inventions.

The proposed amended guidelines spoke to software and business method patents in particular.  For example, in the second line of Part II, chapter IX, section 5.2, paragraph 1, the third sentence of the Patent Examination Guidelines is amended from, “and describe in detail which parts of the computer program are to be performed and how to perform them” to “The components may not only include hardware, but may also include programs.” This seems to allow the software components to be considered equally to hardware components.

Also, Article 25(2) of the Patent Law of the People’s Republic of China states that patent rights shall not be granted for rules and methods for intellectual activities.  “Claims related to business methods that contain both business rules and methods and technical characteristics, shall not be excluded from the possibilities of obtaining patent rights be Article 25 of the Patent Law.”  This appears to provide guidance to examiners that if the claims included technical features, they should not to be rejected under Article 25(2) as a mere rule or method for intellectual activity. This standard for subject matter eligibility is very low in comparison with the United States’ Alice standard.

Therefore, applicants filing for software and business method related patent applications should highly consider filing in China.

Prosecution History Disclaimer Must be “Clear and Unambiguous” for Claim Construction

Takeaway: In Mass. Inst. of Tech. v. Shire Pharm., Inc., the Federal Circuit held that in order to construe the claim scope based on statements made during prosecution, those statements must be analyzed in the context of the prosecution history as a whole in order to be considered “clear and unambiguous.” Mass. Inst. of Tech. v. Shire Pharm., Inc., Case No. 15-1881 (Fed. Cir., Oct. 13, 2016) (Stoll, J) (O’Malley, J, concurring).

The Federal Circuit upheld the district court’s ruling that selected limiting statements “plucked” from the prosecution history does not constitute “clear and unambiguous” surrender of claim scope because they must be viewed of the prosecution history as a whole.

The claims at issue are related to synthetic biodegradable scaffolds for cells to grow in vitro which generates into artificial tissue.  The prior art had issues with allowing blood vessels to penetrate the artificial tissue such that growth of thicker tissue implants were not possible.  The patent at issue improved the scaffolds such that the artificial tissue supported blood vessel growth.

The district court construed the “cells derived from a vascularized tissue” attached to the claimed “three-dimensional scaffold” to generate “vascularized organ tissue” according to their plain and ordinary meaning, and Shire challenged that construction.  Shire pointed to statements made in the Examiner interviews, inventor declarations, and Office Action responses allegedly limiting the scope of the claims to non-skin tissues.  However, the Federal Circuit held that there is a “high standard” for finding of prosecution history disclaimer and that several limiting statements, stated within a 10 year span and made with respect to different claim language, are not “clear and ambiguous” enough to disclaim the ordinary meaning of the terms at issue.

Inter Partes Reviews (IPRs) Are not Reviewable On Appeal

Takeaway: In Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., the Federal Circuit reaffirmed its original patent decision that a decision by the Patent Trial and Appeal Board (PTAB) to terminate the proceedings is not reviewable. Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc., Case Nos. 15-1977; -1986; -1987 (Fed. Cir., Oct. 20, 2016) (Dyk, J).

The US Court of Appeals for the Federal Circuit reaffirmed that a decision by the Patent Trial and Appeal Board (PTAB) to reconsider a decision on the IPR institution is “final and nonappealable,” meaning that is not reviewable on appeal.

In the district court, Bosch sued Cardiocom, a division of Medtronic, alleging infringement of two of Bosch’s patents, Cardiocom petitioned for IPR of those two patents, but the petitions were denied. Then, Medtronic filed three petitions seeking IPR of the two patents and listing Medtronic as the sole real party in interest, failing to mention Cardicom. Bosch moved to terminate the proceedings, alleging that Medtronic had failed to name all real parties in interest and the PTAB agree with Bosch, thus vacating the decisions and terminating the proceedings.

Consequently, Medtronic appealed.  Bosch asserted that the PTAB’s decisions were not appealable under 35 USC § 314(d) and therefore dismissible for lack of jurisdiction, and the Federal Circuit agreed. Medtronic then petitioned for rehearing, following the Supreme Court of the United States’ decision in Cuozzo Speed Technologies v. Lee.   Medtronic argued that the PTAB exceeded its statutory authority when it terminated the proceedings on a non-merits issue, and therefore Cuozzo should not apply. The Federal Circuit disagreed, finding that administrative agencies have intrinsic authority to reconsider their own decisions.   Therefore, the Federal Circuit concluded that the PTAB’s decision to reconsider institution of IPR is, like the original institution decision, “final and nonappealable” under § 314(d).

Facebook-Owned Instagram Attempts to Block Microsoft “Actiongram” Trademark Registration

Takeaway: Instagram is attempting to claim rights to the “gram” suffix by opposing Microsoft’s registration for the mark “Actiongram.”

In Instagram’s Notice of Opposition filing, Instagram alleges that it “will be damaged by the registration of the Actiongram mark,” because Microsoft’s “goods claimed in its application are related to the goods and services offered by Instagram in connection with its Instagram trademarks.”

Currently, Instagram holds an array of federally registered trademarks that apply to an array of classes of goods/services, including “computer software for the collection, editing, organizing, modifying, transmission, storage and sharing of data and information,” among other things.  Similarly, Microsoft aims to register its mark for the class of goods/services that covers “Computer software for virtual reality visualization, manipulation, immersion and integration of audio, video, text, binary, still images, graphics and multimedia files; operating system software; computer software, namely, software for setting up, operating, configuring, and controlling wearable hardware and wearable computer peripherals.”

Instagram also claims that the Actiongram trademark “is deceptively similar to the Instagram trademarks so as to cause confusion, or to cause mistake or to deceive the public as to the origin of [Microsoft’s] goods offered under the mark. Specifically, registration of [Microsoft’s] mark will lead the public to conclude, incorrectly, that [Microsoft] is or has been affiliated or connected with Instagram, and/or that [Microsoft’s] goods provided under the mark are or have been, authorized, sponsored, endorsed, or licensed by Instagram.”

This battle will probably differ from most of Instagram’s other oppositions, in that Microsoft will have the resources to fight back.  It is possible that Microsoft may not see the worth in a costly legal fight for this term and settles for another mark—we shall see.

The Emergence of the “Super” Court

In the Spring 2016 edition of the Business & Bankruptcy Law Journal, Michael H. Anderson and Managing Partner Daniel M. Cislo explore the uneven distribution of patent case filings in their article “Venue Selection and the Rise of ‘Super’ Patent Courts in the Post-AIA Era” (Vol. 3, No. 2, Spring 2016).  Nearly fifty-five percent of all annual patent litigation cases are filed in only three of the ninety-four district courts, leading to the rise of so-called “Super” Patent Courts.  Cislo and Anderson argue that the emergence of these “Super” courts is due in part to uncertain patent property rights, hopes of large financial rewards, and preferences for differing court procedures.  They also note that due to the America Invents Act of 2011, the steep growth in the number of patents filed in the U.S. in the past half-decade might see a reversal.